Bose Corporation v. BSE Co., Ltd.

The dominant element of the applicants trade mark is the word component ‘BSE. However, even if the Board were to consider only this component and compare it with the earlier trade marks, the fact that the signs have more letters in common (75%) than different ones, does not necessarily imply that the signs are visually similar. Counting the total number of letters, order and identical letters in marks can provide certain guidance, but it is not a fool-proof method when assessing the (visual) similarity between the signs. A single letter can have a strong impact on the relevant overall impression of a sign, especially, when the marks are as short as those at issue. The omission of the letter ‘O in the trade mark applied for has such an important effect and creates a mark which will be perceived by the relatively highly circumspect purchaser as different from the opponents trade mark. The contested trade mark will most likely be pronounced letter by letter, that is ‘B, ‘S, ‘E. This creates a very different sound from the earlier trade mark which is pronounced as one word. The conceptual comparison in this case is not relevant since the trade marks per se have no discernible meaning. In light of the foregoing, the signs under comparison are not visually, phonetically or conceptually similar. Furthermore, since the signs are not similar in the case at hand, there can be no likelihood of confusion, even if the earlier trade mark were to have a reputation and regardless of the possible identity of the goods concerned in Class 9. Insofar the opponent alleges ‘association of BSE with the well-known mark ‘BOSE which will damage the uniqueness and distinctive character of the trade mark ‘BOSE, the Board notes firstly that the mere association, whether or not it causes the alleged damage, is not sufficient for the applicability of Article 8(1)(b) CTMR. The concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope. The very terms of the provision exclude its application where there is no likelihood of confusion on the part of the public. The appeal is dismissed.