VOLVO vs LOVOL: "a visual dictionary" in the consumer brain...?

Decisions that relate to Article 8(5) of Regulation 207/2009 on the Community Trade Mark (CTM) -- and the question of conceptual similarity -- and which are likely to develop this field of law further are far and few between.

In Cases T-524/11 and T-525/11 (both of 12 November 2014) the General Court recently agreed with OHIM's Opposition Division's and Board of Appeal's dismissals of two oppositions against figurative trade marks (shown left and above right) including the sign LOVOL, based on an earlier word CTM mark (and word/device mark registrations) for VOLVO, one of which is depicted below. right. 

The court started by explaining that the application of Article 8(5) of Regulation No 207/2009 is subject to three cumulative conditions, (1) the identity of or similarity between the marks at issue; (2) the existence of a reputation of the earlier trade mark relied on in support of the opposition; and, (3) the risk that use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The judges found that the marks were neither visually (different initial letters, etc), nor aurally similar ("the mere fact that the signs at issue contain the letters ‘v’, ‘l’, and ‘o’ and include the letter combination ‘vol’ is not enough"); nor were they conceptually similar. This meant that the opposition thus already fell at the first hurdle of similarity.

Volvo submitted some novel points concerning "conceptual" similarity which, according to the court, "are not based on any principle established by case-law" -- which does not make them any the less interesting.  Volvo argued that 

"consumers who come across the ‘invented trade mark’ LOVOL will be intrigued by that new trade mark for cars, especially since the number of car manufacturers is relatively limited. ... consumers will ask themselves whether that new trade mark for cars has any connection with a very old and highly reputed trade mark for cars and will then be led to associate it with the trade mark VOLVO..." 

and a  

"connection could be made between the signs LOVOL and VOLVO in the minds of consumers because there is a ‘visual dictionary’ in the human brain which people develop when learning to read". 

The Court found that 

"in any event, it does not support Volvo Trademark Holding’s argument: the authors of the article stress that, even where several letters in two words coincide, the differences between the remaining letters mean that reading those words activates different neurones in the human brain. For example, from the point of view of an experienced reader, the distance between the English words ‘hair’ and ‘hare’ is the same as between the words ‘hair’ and ‘soup’, despite the fact that ‘hair’ and ‘hare’ are pronounced identically."

Hmm, Article 8(5)?!!

VOLVO v LOVOL might be a case to look at more closely, though, since it raises some interesting points as to what Article 8(5) and/or conceptual similarity is meant to protect. Neurons in the brain aside, should there be different criteria under Article 8(5) for "reversed" trade marks that cover identical goods where the number of competitors in an industry is limited -- or was Volvo just very creative?  Traditionally two signs are regarded as identical or similar conceptually when they are perceived as having the same or analogous semantic content (Case C-251/95, ‘Sabèl’, para 24). The ‘semantic content’ of a mark refers to what it means, what it evokes or, when it is an image or shape, what it represents.

Intel (in-)famously looked into the effect on the consumers' economic behaviour  (albeit not under the header of similarity but under the header of "harm") so that a reference to a "limited number of competitors" for the relevant consumers to select from, doesn't seem that far fetched, thinking of the idea of a "death by a thousand cuts"... ? Or is this one step too far, especially under the "conceptual similarity heading"?