Action brought on 5 December 2006 — Honda Motor Europe v OHIM — SEAT (MAGIC SEAT)

(Case T-363/06)

(2007/C 20/42)

Language in which the application was lodged: English

Parties

Applicant: Honda Motor Europe Ltd (Slough, United Kingdom) (represented by: S. Malynicz, Barrister, N. Cordell, Solicitor)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Other party to the proceedings before the Board of Appeal: Seat SA (Barcelona, Spain)

Form of order sought

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: the Community word mark ‘MAGIC SEAT’ for goods and services in class 12 — vehicle seats and vehicle seat mechanisms, parts and fittings and accessories for these goods — application No 2 503 902

Proprietor of the mark or sign cited in the opposition proceedings: SEAT SA

Mark or sign cited: the national figurative mark ‘SEAT’ for goods and services in class 12

Decision of the Opposition Division: Opposition upheld

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regulation No 40/94

In support of its submissions, the applicant claims that the Board of Appeal erred in its approach to the visual analysis, in effect conferring word-only protection on a composite earlier mark that contained a large and striking device element.

According to the applicant, the Board of Appeal's phonetic comparison of the marks was allegedly flawed in two respects. First, it failed to appreciate that the word MAGIC in MAGIC SEAT would not be pronounced as a Spanish word and hence the mark as a whole, MAGIC SEAT, would not be pronounced in a Spanish way either. Secondly, it failed to take into account the fact that MAGIC was the first word of the two-word mark, MAGIC SEAT.

Moreover, the Board of appeal failed to apply the ‘rule of counteraction’ in the current case and therefore failed to take into account the fact, as part of the conceptual analysis, that the earlier Spanish mark, comprising the word SEAT and the large ‘S’ badge device element, would be immediately and clearly understood as designating the Spanish carmaker whereas the mark MAGIC SEAT would not be understood so.

In addition, on the question of conceptual dissimilarity, the applicant contends that the Board failed to take into any account the linguistic evidence supplied by the applicant as to how Spanish consumers were likely to see the words MAGIC SEAT.

Furthermore, the applicant claims that the Board failed to appreciate that the category of goods, the features of the relevant market and the attributes of the national consumer for these goods militated against any finding of a likelihood of confusion.

Finally, the applicant considers that the Board failed to take into account whatsoever the applicant's evidence from the trade as to how products of this sort are marketed.