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European Court of First Instance issues its decision in the Barbara Becker case

The present case relates to the lawsuit filed against the appeal decision issued on March 7, 2007 in case R0502/2006-1, opposing Harman International Industries, Inc. and Barbara Becker.
Barbara Becker had previously registered the Community Trademark Barbara Becker, against which Harman International Industries, based on its Community Trademarks BECKER ONLINE PRO and BECKER, filed an opposition.
Since the designated goods of the two trademarks are identical and the trademark themselves are similar to one another, the Opposition Division acknowledged that there was a likeness of confusion and ruled in favor of the opposition. In the subsequent appeal, the First Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) stated that the public would perceive “Barbara Becker” as a whole and dismissed the opposition. However, the CFI later issued a final ruling supporting the conclusion of the Opposition Division that the two trademarks were “similar”.
The underlying reasons to this ruling are as follow. In the case that one of the two words composing a joint trademark is identical to a prior trademark in both appearance and pronunciation and that no specific notion arises neither from the whole nor from each word individually, the two trademarks should in principle, when taken as a whole, be considered as similar.
Further, the two trademarks Barbara Becker and Becker, in the present case, share a certain similarity in terms of appearance and pronunciation when considering the general impression they convey, due to the fact that they both comprise the word “Becker”.
In addition, the prior trademark Becker is perceived by consumers as a family name, while Barbara Becker is perceived by consumers as a personal name. In Italia, when a trademark comprises a family name and a first name, the consumers attribute in general a greater distinctiveness to the family name than to the first name. Accordingly, in the trademark Barbara Becker, there is a strong possibility than “Becker” holds a greater distinctiveness than “Barbara”.