About blackberries and strawberries

The Brussels Court of Appeal has overturned an opposition decision of the Benelux Office for Intellectual Property (BOIP), and held that there is a likelihood of confusion between the earlier EU trade mark BLACKBERRY and the Benelux trade mark application STRAWBERRY.COM for goods and services in classes 9 and 38.

Facts

In May 2016, the UK company Strawberry International Ltd filed a word mark application STRAWBERRY.COM at the BOIP for goods and services in classes 9, 25 and 38.

Blackberry Ltd filed an opposition based on its rights in the earlier EU trade mark BLACKBERRY for goods and services in classes 9 and 38. During these proceedings, the company Strawberry Limited Ltd was taken over by a Belgian company named CKL Holdings N.V. (CKL Holdings).

In December 2017, the BOIP rejected the opposition on the grounds that there was no likelihood of confusion. Blackberry Ltd filed an appeal against this decision before the Brussels Court of Appeal.

The appeal

The opposition decision of the BOIP stated that there was no likelihood of confusion due to the fact that the signs BLACKBERRY and STRAWBERRY.COM are phonetically, visually and conceptually dissimilar. The BOIP did assess the similarity between the goods and services concerned.

The Court of Appeal stated in this respect that the question whether there is likelihood of confusion of the public, which is defined as the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, must be appreciated globally taking into account all factors relevant to the circumstances of the case.

In addition, the Court underlined that a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the signs concerned and vice versa.

The Court held that the level of attention of the relevant public may vary according to the goods and/or services concerned. In addition, the distinctiveness of the earlier mark BLACKBERRY may influence the global appreciation of the likelihood of confusion.

CKL Holdings submitted that the level of attention of the relevant public was in this case higher than average. The Court of Appeal did not share this point of view.

The Court acknowledged that in the telecommunications sector, a consumer will often be assisted by a professional sales person during his purchases but pointed out that that is true only for some of the products and services of the supply chain and not for the whole supply chain. The goods and services concerned are targeted at the public in general.

Therefore, the Court of Appeal found that for the goods and services concerned the level of attention of the public concerned was average.

The Court of Appeal subsequently found that the goods and services signs are partly identical, partly highly similar, partly competitive and complementary.

The similarity between the goods and services was not challenged by CKL Holdings during the opposition proceedings before the BOIP.

The Court of Appeal stated that the '.com' part of the later trade mark is devoid of distinctiveness in relation to the goods and services concerned, as it refers to the fact that the goods can be found in an online environment. It is therefore simply a technical and generic element. The Court of Appeal thus limited its assessment to the elements BLACKBERRY and STRAWBERRY.

When comparing the signs, the Court came to the following conclusions:

• As for the visual comparison, the Court observed that the last part in both signs is identical "berry" and concluded that there is a similarity between both signs.
• For the phonetic comparison, the Court of Appeal concluded there is a certain degree of similarity.
• For the conceptual comparison between the trade marks, the Court of Appeal stated that the element "berry" is neither generic nor descriptive in relation to the goods and services concerned. The Court did not follow the argument of CLK Holdings that BLACKBERRY would be a mere reference to a certain type of mobile phone. This was in any case not established by any evidence.

The Court further pointed out that the strong distinctive power (acquired through use) of the trade mark BLACKBERRY was not contested and concluded that the low degree of similarity between the trade marks must be offset by the great similarity between the goods and services and the highly distinctive character of the earlier trade mark.

Based on the above, the Court of Appeal found that there was a likelihood of confusion among the relevant public between the signs BLACKBERRY and STRAWBERRY.COM and, as a result, found that the trade mark application STRAWBERRY.COM should be refused for the goods and services in class 9 and 38.

Conclusion

The Court of Appeal overturned the decision of the BOIP who failed to assess the likelihood of confusion between the two trade marks. Blackberry's opposition was therefore considered well-founded and the trade mark STRAWBERRY.COM was rejected for goods in Class 9 and services in Class 38.