How far does likelihood of confusion go, within the meaning of Article 8(1)(b) of Regulation 2017/1001 (the EU Trade Mark Regulation (EUTMR)), when it comes to the comparison between two signs? In an interesting decision from last month, the General Court considered that - despite the generally high level of attention of the target public for the Class 5 goods – the figurative sign (depicted below) was confusingly similar to the German word mark ‘MEA’.
In May 2015, Almea Ltd (the Applicant), applied to register the following figurative sign as an EU trade mark (EUTM):
Registration was sought for various goods in Classes 3 (face and body masks, cosmetics, and body oil) and 5 (veterinary preparations, sanitary preparations for medical purposes, food for babies, and plasters) of the Nice Classification.
In November 2015, Sanacorp Pharmahandel GmbH (the Intervener) filed an opposition pursuant to Article 8(1)(b) of the EUTMR in relation to its German word mark ‘MEA’, covering goods in – amongst other – Classes 3 and 5.
In November 2018, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion.
The Intervener appealed the decision to the EUIPO Second Board of Appeal (the Board).
In 2020, the Board considered that there was a likelihood of confusion and annulled the earlier decision. It reasoned that, despite the high attention of the relevant public of some of the goods, there was a likelihood of confusion in view of:
- the identity or strong similarity of the goods at issue,
- the fact that the earlier sign was completely included in the Applicant’s sign and made up three fifths of the sign,
- the at least low degree of visual and phonetic similarity between the signs, and
- the average level of inherent distinctiveness of the earlier mark and the principle that consumers must rely on an imperfect recollection of the marks.
The Applicant appealed to the General Court and claimed that the Board had carried out an incorrect assessment of the likelihood of confusion by not taking sufficient account of the importance of the beginning and length of the signs and that it had given undue weight to the common ending of the signs in its overall assessment of the signs.
The General Court’s decision
The General Court first considered that there is a likelihood of confusion when there is a risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings. It must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (T-162/01 Laboratorios RTB v OHIM).
It was undisputed between the parties that the relevant territory was Germany and that the goods were aimed at the general public in Germany. As regards the goods in Class 5, both the Board and the General Court noted that these were aimed at professional consumers with specific knowledge and expertise. Consequently, both instances found that the level of attention of the relevant public varied from average to high depending on the goods concerned.
Comparison of the signs
In relation to the visual and phonetic similarity between the signs, the General Court first considered the Applicant’s claim that the Board had not taken sufficient account of the importance of the beginning of the sign applied for and of the length of the signs.
It reasoned that the relevant public – on account of the shared element ‘mea’ in both signs – would perceive a certain low visual and phonetic similarity between the marks. Even if the Applicant’s sign contained the additional letters ‘a’ and ‘i', this did not prevent consumers from perceiving the common element ‘mea’ in both signs. In this sense, the letters ‘a’ and ‘i’ did not attract the attention of the relevant public more than the element ‘mea’ which followed it. This was also reinforced by the fact that, phonetically, the initial element ‘ai’ was the first syllable and the two other syllables were found in the common element ‘mea’.
The Court then moved to consider the applicant’s claim that the shorter a sign is, the more easily the public is able to perceive all of its single elements. It reasoned that, while it was true that the signs at issue are short and that consumers will perceive the differences between them more easily, such a rule is not always applicable. While acknowledging the existence of differences between the signs, the Board had found that it was also relevant to consider the fact that the earlier sign was completely included in the Applicant’s sign. In the General Court’s view, the Board could not be criticized for having reasoned in that way because, even if the signs were considered short, that element was not decisive, since the earlier sign was completely included in the Applicant’s sign.
Finally, as regards to the Applicant’s claim that excessive importance had been given by the Board to the common ending in its overall assessment of the signs at issue, the General Court confirmed the Board’s findings: even though the element “mea” did not have a distinctive role in the Applicant’s sign, it still contributed in a significant way to the overall impression produced by that sign, in so far as it made up three fifths of the sign’.
Moreover, there was no basis for the claim that the average consumer who is reasonably well informed and reasonably observant and circumspect would systematically disregard the second part of the word element of a sign to the point of remembering only the first part. According to the General Court, consumers do not tend to break a sign down into word elements when that word element suggests a concrete meaning or resembles words known to them.
The General Court therefore held that the Board had been correct in finding that there was at least a low degree of visual and phonetic similarity between the signs at issue.
It was not possible to compare the signs conceptually, since neither the word ‘almea’ nor the word ‘mea’ had any meaning for the relevant German consumers.
Likelihood of confusion
A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (C‑39/97, Canon).
The General Court concluded that, having regard to all the above considerations and given the inherent distinctiveness of the earlier mark, the Board had been correct to find that there was a likelihood of confusion. In reaching that conclusion, the Board had duly taken into consideration, the level of attention of the relevant public, the identity or strong similarity between the goods at issue, and the at least low degree of visual and phonetic similarity between the signs.
This case serves to highlight the difficulties that practitioners face when appealing trade mark decisions. In this sense, the Board’s assessment as regards the figurative element in the Applicant’s sign remained unchallenged by the Applicant before the General Court. The fact that the Board had considered that the relevant public would view the figurative element as secondary vis-à-vis the verbal elements of that sign could have provided the Applicant with further opportunity to argue that there’s no likelihood of confusion, due to the figurative nature of Applicant’s sign. However, whether such argument would succeed is debatable because, according to settled case law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. In addition, it is also settled case law that, when it comes to marks with both a figurative and a word component, the latter would dominate the mark, unless the former has some striking stylization.
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