ALLIA v. Primark Holdings

As far as the evidence furnished by the opponent during the appeal proceedings is concerned, the Board considers, exercising its discretionary power, that this evidence has to be taken into consideration in view of its supplementary nature. It proves, moreover, that the PRIMA trade mark was being put to genuine use in France during the reference period in relation to furniture and mirrors. There are numerous invoices relating to the sale of these goods to customers domiciled in France. It is irrelevant that they relate to furniture and mirrors for bathrooms and that the PRIMA trade mark was also being used for sanitary installations. The goods concerned are identical, 'looking-glasses' and 'mirrors' being synonyms. The Board nevertheless considers that there is no likelihood of confusion despite the identity of the goods (Class 20), because there are clear visual and aural differences between the trade marks. Account also has to be taken of the weak distinctive character of the PRIMA trade mark as far as the average French consumer is concerned. The opponent explicitly acknowledged that the PRIMA trade mark conveyed the idea of 'first'. Contrary to the arguments put forward by the opponent, this concept is by no means arbitrary either for furniture and mirrors or for any other product. The idea of claiming to be first in the market or first in one's category is quite normal. It is therefore impossible to accept the opponent's argument that nothing justifies the inclusion of this notion in the trade mark applied for, which in any case seems much less evocative of the idea of being first than the opponent's trade mark. This is because the PRIMARK trade mark seems more arbitrary than the PRIMA trade mark as the '-RK' ending is fairly unusual in French and prevents the PRIMARK trade mark being perceived simply as a reference to the notion of being first in one's category. This ending also enables consumers to distinguish easily between the two trade marks. The appeal is dismissed.