WESTLIFE not a hit in Europe -------------------------------------------------------------------------------- The European Court of First Instance (CFI) has upheld an appeal to reject a Community trademark application for WESTLIFE filed on behalf of Irish boy band Westlife. The decision is a blow for the band who sought to protect through EU-wide registration valuable revenue streams from its music and merchandising. In May 1999 BMG Music filed an application to register WESTLIFE as a Community trademark on Westlife's behalf for musical entertainment and related merchandising products - such as clothing and photographs - in Classes 9, 16, 25 and 41 of the Nice Classification. Reemark Gesellschaft für Markenkooperation mbH, a German subsidiary of cigarette manufacturer Imperial Tobacco, opposed the application based on its earlier German and international registrations for the mark WEST in the same classes. The Office for Harmonization in the Internal Market (OHIM) upheld the opposition. Bluenet Ltd (BMG Music's successor in title) lodged an appeal with the OHIM's Board of Appeal and succeeded. Reemark appealed to the CFI. The CFI set aside the Board of Appeal's decision. It held that: the likelihood of confusion as to the commercial origin of the goods or services must be assessed globally, taking into account such factors as: the relevant public's perceptions of the signs; the relevant public's perceptions of the goods or services; and all other factors characterizing the specific case, including the interdependence between the similarity of the signs and the goods or services. the relevant public in this instance was the German public; the goods and services for the marks at issue were identical or similar; in view of the fact that the goods or services were identical or similar, an examination of the marks WESTLIFE and WEST was necessary to determine whether they could be said to be conceptually, aurally and visually similar; the marks were conceptually, aurally and visually similar as the WESTLIFE mark consists exclusively of the mark WEST, to which the word 'life' - not an invented word - has been added; if assessed globally, neither of the elements 'west' nor 'life' formed the dominant element of the mark applied for; and coexistence of the two marks might lead the public to associate the products marketed under the WESTLIFE mark with those of the earlier WEST mark and, thus, give rise to a mistaken belief that there is some economic link between the two proprietors. Accordingly, the CFI rejected the application on the basis that WESTLIFE was confusingly similar to WEST within the meaning of Article 8(1)(b) of the Community Trademark Regulation. Westlife may either appeal to the European Court of Justice or convert its application into separate national applications to cover the EU member states (except Germany). Both options carry expense and risk. In the meantime, valuable revenue streams for the boy band are not fully protected and the CFI finding may stall merchandising activities, at least in Germany. Poor pets, I feel for them.
