The case of Chair Entertainment Group LLC v OHIM  Case T-717/13 demonstrates the challenges trade mark advisors face when advising clients as to the likelihood of confusion between two trade marks.
In 2009, Chair Entertainment applied to register the Community trade mark "SHADOW COMPLEX" for "computer game software for personal computers and home video game consoles".
Libelle AG opposed the application on the basis of its earlier Community word mark "BusinessShadow", which it had registered in 2005 for "computer software (recorded)". Libelle argued that there was a likelihood of confusion on the part of the public, due to the identity/similarity between its "BusinessShadow" mark and the SHADOW COMPLEX mark and the identity between the goods for which its mark was registered and the goods covered by Chair Entertainment's application.
Before you read any further - imagine you are in PC World or Currys looking for some computer software. If you saw "BusinessShadow" branded software and "SHADOW COMPLEX" branded software on the shelf next to one another, would you think they came from the same software developer?
As you would expect, the Court found that the goods covered by the mark applied for were identical to the goods registered by Libelle.
In comparing the two marks, the Court assessed their visual, phonetic and conceptual similarity, based on the overall impression given by the signs, bearing in mind their distinctive and dominant components and bearing in mind that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. Nevertheless, an average consumer will break a mark down into elements which, for him suggest a concrete meaning, or which resemble words known to him.
The Court found that the words "business" and "complex" had weak distinctive character for computer software, as they are so widely used. It found that the "shadow" element was the most distinctive part of both marks, as that word is not descriptive when combined with the words "business" or "complex".
On that basis, the Court found that there was visual similarity between the two marks, because both contained the word "shadow". The Court ruled that any dissimilarity between the marks, arising as a result of their differing lower and upper case letters was irrelevant.
The Court also found that that there was an average degree of phonetic similarity between the marks (because of the distinctive "shadow" element in both marks) and that there was a conceptual similarity between the marks (due to the way the English speaking public would understand the word "shadow" to mean 'comparative darkness').
As a result of the above, the Court found that a likelihood of confusion did arise, particularly as the two signs shared their most distinctive element (i.e. the word "shadow"). Thus, it refused to register the "SHADOW COMPLEX" mark as a Community trade mark.
This case highlights OHIM's generosity, when it comes to protecting the rights of Community trade mark owners. It also highlights just how difficult it can be for trade mark advisors to predict, with any certainty, how OHIM will interpret the likelihood of confusion between two trade marks that share an identical word.