An action was brought against the second board of appeal of OHIM and their decision to invalidate the mark FSA-K-FORCE.
FSA Srl successfully registered the mark FSA K-FORCE as a CTM in respect of the following goods:
Class 9: 'Cycle helmets':
Class 12: 'Bicycle and bicycle parts and accessories thereof, namely: bicycle frames and their parts, bicycle head tubes, bicycle front forks; bicycle wheels, bicycle hubs, bicycle spokes, bicycle rims; bicycle brake assemblies; bicycle cranks; bicycle chains, chain rings for bicycles; seat posts for bicycles, bicycle saddles; quick release devices for bicycle wheels; bottle cage; handlebars for bicycles, bicycle handlebar stem, headset bearings for bicycles; bicycle gears, derailleurs, sprockets for bicycles, bottom brackets for bicycles, axles for bicycles, bearing journals'.
Motokit Veículos e Acessório applied to invalidate the mark based on the similarities with their earlier registration of the mark FORCE X covering the following goods:
Class 9: 'Goggles, lenses for goggles; protective face masks; helmets; protective optical goods, headgear and clothing';
Class 12: 'Bicycles, parts and fittings for bicycles, including handlebars, handlebar tape, handlebar grips, bar ends, handlebar stems, seats, crank sets, pedals, hubs and rims, air pumps for bicycles, except valve keys and pliers, tyres and inner tubes'.
The Cancellation Division at OHIM found that there was a likelihood of confusion in the minds of the relevant public and invalidated the mark.
FSA Srl appealed the decision and the second Board of Appeal dismissed the appeal. The Board of Appeal held that the goods were identical and the marks were visually (to a low degree), phonetically and conceptually similar.
FSA Srl appealed to the EU General Court. FSA submitted that the word FORCE is synonymous with strength, energy and power and that the word FORCE is commonly used in connection with cycling. They also submitted that they have a reputation in the element FSA.
The General Court held that the Board of Appeal did not take into account that the goods in question are technical and safety wear which the relevant user will chose carefully and therefore have a high level of attention when purchasing the goods. The General Court also considered the word FORCE to be descriptive of the characteristics of the goods in question and considered that the word FORCE can also designate one of the purposes of the goods. For example, the purpose of the brakes is to offer increased power.
The General Court held that there was no likelihood of confusion due to the differences between the marks together with the weak distinctive character of the common element FORCE.Posted by: in: Case Law, Companies, News, Trade Marks