In an interesting decision earlier this year, the General Court upheld the EUIPO Fifth Board of Appeal’s decision regarding a likelihood of confusion between the Bezos Family Foundation’s application for EU trade mark (EUTM) registration of ‘VROOM’, the name of a global programme aimed at facilitating early brain development, and the earlier EUTM ‘POP & VROOM’, owned by SNCF (France’s state-owned rail company).
In particular, the Foundation had argued that the elements ‘pop’ and ‘vroom’ in the earlier mark were onomatopoeic expressions which referred to an engine sound, since the opponent’s company is an affiliate of a well-known railway company and the goods designated by that mark concerned the field of transport. The General Court disagreed. According to the Court, this could not in any event reduce the distinctive character of the opponent’s mark in respect of those goods considered as a whole.
In December 2017, the Foundation applied to register ‘VROOM’ for Class 9 goods (computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education).
In April 2018, SNCF filed an opposition pursuant to Article 8(1)(b) of Regulation 2017/1001 the EU trade mark regulation (EUTMR)) based on its earlier French word mark ‘POP & VROOM’ covering – among other things – goods and services in Classes 9 (computer software and mobile applications for the bringing together of private individuals for car sharing and vehicle sharing purposes) and 42 (computer software design for processing information relating to rail, road and maritime traffic).
The Opposition Division upheld the opposition in April 2019. The Applicant appealed the decision to the EUIPO Fifth Board of Appeal (the Board). In November 2019, the Board dismissed the appeal and found that there was a likelihood of confusion by considering, first, the average degree of visual and phonetic similarity of the marks at issue and, second, the identity of the goods in question.
The Applicant subsequently appealed to the General Court.
The General Court’s considerations
Relevant public and its level of attention
The General Court confirmed the Board’s finding that the relevant public was the French public, composed of both the general public and professionals whose level of attention is, in essence, high.
Comparison of the goods
The General Court then considered that the fact that the opponent’s mark covered, in addition to ‘computer software’ and ‘mobile applications’, also goods and services relating to transport services was not such as to restrict to that field alone the extent of the protection of that mark regarding ‘computer software’ and ‘mobile applications’.
When the goods covered by an earlier mark include the goods covered by a later trade mark application, then those goods, belonging to the later mark, are considered identical (Miles International v OHIM (T‑385/03)). It followed that the goods covered by the Applicant’s mark were included in those covered by the opponent’s mark.
Comparison of the marks
In relation to the comparison of the marks, the General Court considered first that, irrespective of the fact that the onomatopoeic expression ‘vroom’ is not the first part of the opponent’s mark, the Foundation’s mark is included entirely in the opponent’s mark. According to case law, that fact alone is, in principle, liable to create both a strong visual and phonetic similarity between the marks at issue (For Tune v EUIPO (T‑815/16)).
Secondly, although, as the applicant had claimed, the relevant public normally attaches greater importance to the first part of words, this does not apply in all cases, nor does it call into question the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them.
Furthermore, contrary to the Foundation’s claim, the onomatopoeic expression ‘vroom’ is not descriptive and could not be regarded as registered only in respect of computer software and mobile applications that relate to the field of transport alone. Therefore, the fact that the onomatopoeic expression ‘vroom’ could be understood as referring to an engine sound, which could potentially be perceived by the relevant public as alluding to that sector, is not sufficient to establish a sufficiently direct and specific relationship between that onomatopoeic expression and computer software and mobile applications as a whole.
It followed that the Board had correctly found that the marks had an average degree of visual and phonetic similarity, despite the fact that the earlier mark has a higher number of letters and syllables and an ampersand between the elements ‘pop’ and ‘vroom’.
As regards the conceptual similarity, the fact that, the Board, the applicant, and the EUIPO had considered that the onomatopoeic expression ‘vroom’ in the marks was capable of referring to an engine sound, those marks shared, at least in part, the same concept and had, for that reason, at least an average degree of conceptual similarity. However, whether the marks had an average degree of conceptual similarity or were conceptually identical was not, in the present case, such as to affect the global assessment of the likelihood of confusion.
Distinctive character of the opponent’s mark
The applicant had argued that the opponent’s mark merely had a low degree of distinctiveness. The General Court considered that the opponent’s mark was registered in respect of ‘computer software’ and ‘mobile applications’ in Class 9 as a whole, not only for such goods relating to the field of transport. Consequently, the Applicant’s argument could not reduce the distinctive character of the opponent’s mark in respect of those goods.
The 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 covered. 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 (Canon (C-39/97)).
The General Court considered that the goods in question were identical, the marks at issue had an average degree of visual and phonetic similarity and the opponent’s mark had an average degree of distinctiveness. Furthermore, the marks also had at least an average degree of conceptual similarity.
In light of all of the above, the General Court considered that the Board had been correct in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of the EUTMR.
The decision is a nice application of the well-established approach to onomatopoeias. The General Court considered that ‘vroom’ would not be necessary recognized by the public in accordance with this meaning. This is in line with the EUIPO Guidelines, which attach importance to the relevant context.