Vimeo v OHIM (Case T-96/14)
The General Court has dismissed an appeal by Vimeo LLC and found that the trade mark VIMEO was confusingly similar to the earlier MEO trade mark owned by PT Comunicações, SA. PT's trade mark was registered in the following stylization:
Similarity of the marks
The Court made a detailed analysis of the similarity between the marks as follows:
- Visual comparison: while the relevant public will perceive a difference in the marks due to the stylised typeface and figurative elements of the MEO mark, and the greater number of letters and the group of letters "vi" in the VIMEO mark; they will perceive that the marks share the element "meo" and therefore perceive a certain visual similarity between them.
- Phonetic comparison: the marks have a certain phonetic similarity due to the fact that the letters "meo" are entirely contained within the VIMEO mark – the relevant public will pronounce VIMEO as a whole world and pronounce "meo" in the same way as in the MEO mark. The presence of the letters "vi" in VIMEO and the longer length of the word do not lead to the conclusion that there is no phonetic similarity at all between the two marks.
- Conceptual comparison: no conceptual comparison of the mark is possible as neither of the marks have any meaning for the relevant public. In particular, the English speaking part of the public would not give any meaning to MEO and would also not necessarily associate the term "vimeo" with the term "video"
Vimeo also argued that the Board failed to take into account evidence showing that the marks had co-existed peacefully. This evidence included a witness statement from Vimeo's president, extracts from the Vimeo website showing promotional events for the Vimeo platform and profiles of long-standing users of Vimeo, and copies of newspaper articles from between 2008 and 2010. The Court held that while this evidence showed prior use of the VIMEO mark, it was insufficient to demonstrate peaceful co-existence of the marks in issue, as it gave no indication as to the relevant consumer's perception of the two signs.
Taking into account the visual and phonetic similarities of the marks, the similarities between the goods and services at issue and the ordinary distinctive character of the MEO mark, the Court concluded that the overall impression produced by the two marks could lead the public to believe that the goods and services at issue come from economically linked undertakings. As such, Vimeo's appeal was dismissed in its entirety and the OHIM's decision to reject the application remains in force
The case is an example of how technical the OHIM, and the General Court, can be when considering similarity between marks. The emphasis is often on what is common between marks rather than what distinguishes them. Here even a moderately low level of similarity gave rise to a likelihood of confusion. It is particularly notable that aspects like the length of the mark and the prefix, which many practitioners would consider to substantially reduce similarity, were not sufficient in this case. This judgment will make life even harder for those advising businesses on the launch of new brands.
For those businesses with established brands, the case also shows the high evidential threshold that must be met in order to demonstrate that the brand has been peacefully co-existing with the brands of other earlier trade mark owners.
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