As anyone familiar with mosquitos knows, the smallest things can sometimes cause the biggest trouble. So found Nokia recently, when it stumbled in an attempt to register LIFE BLOG as a CTM due to a challenge by Medion AG based on its short and simple registered German mark, LIFE (Nokia Oyj v OHIM, Case T-460/07).
This case and the ECJ's important ruling on composite marks 5 years ago in Medion (Case C-120/04) underline the need for caution where a new brand incorporates another registered mark that is only weakly distinctive.
Particularly before OHIM, the earlier mark may pack more power than one thinks.
The dispute in Nokia began when the Finnish telecoms company applied to register LIFE BLOG as a CTM in Classes 9, 38 and 41 in 2004. Medion opposed on the basis of its own German registration for LIFE in Classes 1, 7 - 11, 16, 21, 28, 37, 38, 41 and 42.
The Opposition Division found for Medion, holding that LIFE and LIFE BLOG were similar and that the goods and services were partly similar such as to create a likelihood of confusion for most of the goods and services claimed. This ruling was upheld on appeal, and subsequently by the General Court. It is not so much the outcome, which might have been predicted, but rather the General Court's reasoning which is illuminating.
In essence, the General Court followed the Board of Appeal in regarding the earlier LIFE mark as being of "normal distinctiveness" in Germany following the ruling by the ECJ to that effect in the earlier Medion case. The English word LIFE was in common use in Germany and was likely to be understood as referring to the concept of life rather than to the concept of durability. The term BLOG on the other hand was widely recognised even in Germany as being short for "web log" and was "rather weak".
Visually and aurally, the General Court regarded the marks as similar, in part because the common element, LIFE, appeared at the start of the later mark and was therefore more likely to come to the attention of the average consumer. Conceptually, the only difference was in the presence of the word BLOG in the later mark; and given the initial position of LIFE and the descriptiveness of BLOG, the conceptual differences would not be sufficient to offset the visual and aural similarities.
LIFE and BLOG were regarded as having equal prominence in the later mark, but given the descriptiveness of BLOG and the initial position of the LIFE element, the latter was regarded as being more likely to attract the consumer's attention.
As it was not disputed that the goods and services were partly identical and partly similar, it was no great leap from here to finding a likelihood of confusion, and the General Court upheld the findings of the Board of Appeal on that point.
Even before Nokia, it was clear from cases like Medion that weak registered marks can wield a power disproportionate to their size and distinctiveness. Anyone searching a new mark such as LIFE BLOG would therefore have paused, at the very least, upon noting a registration for LIFE on its own. Nokia's advisors probably did.
However, this is where consensus ends, because how best to deal with short and weakly descriptive marks with such ostensibly wide rights is a matter for long debate.
The fundamental problem in Nokia is that the mark in question is, to native English-speaking minds, probably less distinctive than the General Court assumed. The Court attributed some distinctiveness to LIFE on the basis that German consumers were unlikely to link it to the durability of goods, but would instead think of "life" as a concept in general. In fact, though, in common and especially in advertising parlance, LIFE has come more and more to denote "lifestyle," eg, "products that suit your busy life". As such, it is hard to see how a simple mark such as LIFE could have any distinctiveness at all for "lifestyle" products and services, such as, for example, entertainment equipment, mobile phones, leisure products, clothing, etc.
The Court accepted that some of the products and services at issue in this case were expensive and that the average consumer was likely to take greater care in selecting them. If that really were the case, though, wouldn't the common and descriptive nature of LIFE influence the impression of the average consumer as to whether the sources of LIFE and LIFE BLOG products and services were necessarily economically linked?
It is possible that the outcome may have been different had Nokia been able to show that sufficient numbers of third parties in Germany used LIFE on its own to denote "lifestyle" that the distinctiveness of the LIFE mark was effectively diluted. Such tactics may well prove fruitful in other, similar cases depending on the state of the relevant marketplace; certainly, in a case like Nokia, such evidence would not prove elusive in an English-speaking one.
The long reach of Medion's mark in Nokia contains a useful lesson, though, rather than just a discourse on the strength or otherwise of one party's rights. That lesson is that ostensibly weak marks may punch above their weight, particularly where it is not obvious that their descriptive meaning is clear in the jurisdictions where they are registered. In such cases, evidence that such marks are understood descriptively in the relevant marketplace can really matter. Failure to prepare an evidence-based case against such Davids can bring down many a Goliath.