Interflora: C-323/09 (Preliminary ruling); CTMA No: 909838; Judgment of 22/09/2011; Language of the case: EN
FACTS:INTERFLORA is a national TM in the United Kingdom (UK) and also a CTM which, so far as the flower-delivery service is concerned, has a substantial reputation both in the United Kingdom and in other Member States of the EU.
M & S is one of the main retailers in the UK. It retails a wide range of goods and supplies services through its network of shops and via its website www.marksandspencer.com. One of those services is the sale and delivery of flowers. That commercial activity is in competition with that of Interflora. It is common ground between the parties that M & S is not part of the Interflora network.
Using the ‘AdWords’ referencing service, M & S selected as keywords the word ‘Interflora’, as well as variants made up of that word with minor errors and expressions containing the word ‘Interflora’. Consequently, when internet users entered the word ‘Interflora’ or one of those variants or expressions as a search term in the Google search engine, an M & S advertisement appeared under the heading ‘sponsored links’.
Following its discovery of those facts, Interflora brought proceedings for TM infringement before the High Court of Justice (England & Wales), Chancery Division, which decided to stay the proceedings and refer 10 questions to the CJ for a preliminary ruling. Following a request for clarification from the CJ, the referring court, withdrew its fifth to tenth questions, maintaining solely the following four questions:
I. Questions
By questions 1, 2 and 3(a), the referring court asked, in essence, whether, on a proper construction of Article 9(1) (a) of CTMR, the proprietor of a TM is entitled to prevent a competitor from displaying – on the basis of a keyword which is identical to that TM and which has been selected in an internet referencing service by the competitor without the proprietor’s consent – an advertisement for goods or services identical to those for which that mark is registered (Para.27).
By question 4 the referring court sought to ascertain whether it is relevant that the advertisement concerned is liable to lead some members of the relevant public to believe, incorrectly, that the advertiser is a member of the TM proprietor’s commercial network and that the provider of the internet referencing service does not permit TM proprietors to prevent signs identical to their trade marks being selected as keywords (Para.28).
II. Ruling of the Court
- Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prevent a competitor from advertising – on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor’s consent – goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions of the trade mark. Such use:
– adversely affects the trade mark’s function of indicating origin where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party;
– does not adversely affect, in the context of an internet referencing service having the characteristics of the service at issue in the main proceedings, the trade mark’s advertising function; and
– adversely affects the trade mark’s investment function if it substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.
- Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94 must be interpreted as meaning that the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor has, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby takes unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising is detrimental to that distinctive character (dilution) or to that repute (tarnishment).
Advertising on the basis of such a keyword is detrimental to the distinctive character of a trade mark with a reputation (dilution) if, for example, it contributes to turning that trade mark into a generic term.
By contrast, the proprietor of a trade mark with a reputation is not entitled to prevent, inter alia, advertisements displayed by competitors on the basis of keywords corresponding to that trade mark, which put forward – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark with a reputation – an alternative to the goods or services of the proprietor of that mark.
B: General Court: Judgments and Orders on appeals against decisions of the OHIM, Article 65 CTMR
BETTER HOMES AND GARDENS: T-524/09; Board's case: R0517/2009-2; CTMA No: 7240948; Judgment of 07/09/2011; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)
FACTS: The applicant filed a CTM application for the verbal mark ‘BETTER HOMES AND GARDENS’ for goods and services in Classes 16, 35 and 36. The Examiner concluded that the application should be refused partially for ‘auctioneering services’ in Class 35 and all the services in Class 36 on the basis of Article 7(1)(b) CTMR. The applicant filed an appeal in so far as it concerned solely the services in Class 36.
The Board of Appeal confirmed the contested decision and dismissed the appeal. It decided, in essence, that the advertising slogan ‘BETTER HOMES AND GARDENS” which conveys a banal, laudatory and informative message, which the relevant public will understand without any particular effort of reflection, did not constitute an indication of a particular business origin.
The applicant lodged an action before the General Court, claiming infringement of Article 7 (1) (b) CTMR.
SUBSTANCE: The appeal is dismissed and the decision of the Board confirmed.
- The alleged infringement of Article 7(1) (b) CTMR
The distinctive character must be assessed in relation to the relevant public consisting of the average EU consumer who is, first, reasonably well-informed and reasonably aware and attentive, and, second, English speaking (Para.16).
The GC is of the opinion that the expression “BETTER HOMES AND GARDENS” will be perceived by the relevant public as being of a laudatory nature in that it informs the relevant public of the specific nature of those services (Para.21).
The GC concluded that since the mark applied for is not particularly original or resonant, and does not require at least some interpretation or thought on the part of the relevant public, it must be held that the mark is devoid of distinctive character within the meaning of Article 7(1)(b) CTMR (Para24).
CRAIC: T-83/09; Board's case: R1888/2007-2; OD case: B1155730; CTMA No: 5307392; Judgment of 09/09/2011; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)
FACTS: Arthur Crack Ltd filed a CTMA for the word mark CRAIC for goods within Classes 32 and 33. Reformed Spirits Company Holdings Ltd, sought to register the assignment of that CTM. The registration for the transfer was accepted, carried out and notified by OHIM to the intervener.
Mr. David Chalk sought the registration of an assignment to him of the CTM agreed by the initial proprietor. David Chalk indicated that the CTM had been assigned to him before it was transferred to Reformed Spirits Company Holdings Ltd. On May 2007, OHIM notified the parties of its intention to revoke its notification registering the intervener as the proprietor of the CTM. The assignment concluded in favour of David Chalk was before that of in favour of Reformed Spirits Company Holdings Ltd. Consequently, the former was already the proprietor of the mark at the time of the conclusion of the later assignment.
Reformed Spirits Company Holdings Ltd made its observations on the proposed revocation, maintained that the registration in the register of the later assignment in its favour was valid and requested that its registration as rightful proprietor be maintained.
On October 2007, the examiner upheld the intervener’s arguments, rejected the applicant’s request and decided not to revoke the registration of the intervener as proprietor of the Community trade mark. On November 2007, the applicant lodged an appeal with OHIM under Articles 57 to 62 of CTMR No 40/94 (now Articles 58 to 64 of CTMR No 207/2009) against the examiner’s decision.
The Board dismissed the appeal.
The applicant filed an appeal before the GC
IC4: T-274/09; Board's case: R1380/2007-1; OD case: 928921 CTMA No: 004255411; Judgment of 09/09/2011; Language of the case: EN (Action upheld)
FACTS: DSB filed a CTMA for the word mark “IC4” for services in Class 39, namely, ‘Transport; packaging and storage of goods; travel arrangement; travel agency activities; transport brokerage; vehicle rental; railway transport’. Deutsche Bahn AG filed a notice of opposition based on the earlier verbal CTM “ICE” registered for services in Class 39 and on the earlier German figurative mark registered for the same Class and represented as follow. The grounds for opposition were those laid down in article 8.1 (a) and (b).
CTMA | Earlier CTM /rights |
IC4 |
ICE |
The Opposition Division rejected the opposition. The opponent lodged an appeal before the Board. The Board dismissed the appeal.
The opponent filed an appeal before the GC.
Sole plea: Infringement of Article 8(1) (b) of CTMR No 207/2009
The applicant claims that the Board’s decision is vitiated by an error of assessment since it proceeded directly to an analysis of the likelihood of confusion, without going through the usual stages of reasoning involving a visual, phonetic and conceptual comparison of the signs.
Having observed that the sequence of letters ‘ic’ designates a certain type of train service, the Board took the view that the three marks at issue were descriptive, and, consequently, that they could not fulfill the function of indicating the commercial origin of the services in question. It therefore took the view that the relevant public would not perceive the IC4, ICE and IC signs to be trade marks, which was considered sufficient to rule out any likelihood of confusion.
For the GC, in adopting that approach, the Board made a number of errors of law. Indeed, it is true that the distinctiveness of the TM is to take into account when assessing the likelihood of confusion. However the Board’s reasoning in the contested decision is of no relevance to the analysis of the likelihood of confusion (Para.40).
Furthermore, the GC observed that none of its findings was in any way based on the pleas and arguments put forward by the parties to the opposition procedure. Therefore, the GC considers that the Board’s main reasoning cannot constitute a sufficient basis for the contested decision (Para.44).
The relevant public:
According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the point of view of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect.
– The degree of attention of the relevant public:
The GC observes that, in the present case, the services are aimed at professional people, whose degree of attention is generally high, as well as at end-users of those services, whose degree of attention may, admittedly, be lower. However, as the intervener submits, the services in question can be purchased in travel agencies and via the internet and, accordingly, the purchase may be carried out at leisure, if appropriate after a detailed personal discussion in which the services offered are described and compared. It follows that the degree of attention of the relevant public cannot be described as limited, as the applicant claims, but must be regarded as being average (Para.50).
– The geographical determination of the relevant public
The Court recalls that the likelihood of confusion has to be assessed in regard of the perception of the relevant public of the territory in which the earlier TMs are protected.
It concludes that, in the present case, it is common ground that the likelihood of confusion between the IC4 mark applied for and the earlier CTM ICE must be assessed from the point of view of consumers in the European Union, and that the likelihood of confusion between the IC4 mark and the earlier IC mark registered in Germany must be assessed from the point of view of the German public.
Comparison of the services
The Board did not compare the services but relied on the findings of the OD which had carried out a detailed analysis. As those findings are not disputed by the parties, the GC considers they must be upheld.
Nevertheless, it notes that the OD failed to determine the degree of similarity between services other than that of transport, referred to in the application for registration, and the services in respect of which the IC trade mark was registered. Therefore, it considers that the Board failed to provide an adequate statement of reasons for its decision, and that this lack of reasoning would, by itself, suffice to render that decision unlawful and consequently to lead, to its partial annulment, since the Board sought to adopt the statement of reasons for the decision of the OD (Para.64)
In those circumstances, the Court deems it appropriate to consider, whether, the Board of Appeal was fully entitled to rule out any likelihood of confusion between the IC4 trade mark applied for and the earlier CTM ICE.
Comparison of the signs
In relation to the visual comparison, of the IC4 and ICE signs, the GC considers that the relevant public will perceive the marks at issue as having an average degree of visual similarity. It notes to sustain its opinion that even if the difference between the third character of each sign constitutes an element of differentiation, the significance of which is heightened owing to the brevity of the signs at issue, those differences are not such that those signs may be regarded as being entirely dissimilar.
As regards the phonetic comparison, the GC recalls it must be taken account of the point of view of the consumers in the European Union. The GC notes that in languages other than English, the earlier mark ICE will be pronounced as three syllables whereas English speakers will be likely to pronounce it both as a set of initials and as the word meaning frozen water, pronounced as a single syllable. Therefore, the GC concludes that, with the exception of a part of English speakers, the relevant public will perceive the signs at issue as having a low degree of phonetic similarity linked to the sequence of the letters ‘i’ and ‘c’, which are common to both signs.
Regarding the conceptual similarity, the GC observes that the ICE sign means ‘frozen water’ to an English-speaking consumer and that the presence of the figure ‘4’ in the IC4 sign prevents non-English-speaking consumers from linking the letters ‘i’ and ‘c’ which make up that sign to the notion of ‘intercity’ train. However, as pointed out by the Board, it is customary, in connection with the services concerned, to use the set of letter “ic” to designate the intercity train. Furthermore, as the applicant submits, it is conceivable that the characters ‘e’ and ‘4’, which complete the signs at issue, will be perceived as amplifying the nature of the services designated by the signs at issue, namely, ‘express’ and ‘fourth generation’, respectively.
In those circumstances, the GC held that the signs at issue have an average degree of conceptual similarity.
Likelihood of confusion
The GC recalls that a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the signs, and vice versa and that it is necessary to take into account the degree of distinctiveness of the earlier TM in the global assessment of the likelihood of confusion. Therefore, it concludes that the Board erred in taking the view that it was not necessary to examine it.
In the present case, the GC notes that it is a matter of common knowledge that the term ICE appears as the applicant’s TM in a number of German dictionaries. In addition, the fact that it is highly distinctive in Germany alone does not prevent to take it into consideration since it suffices that a likelihood of confusion exists only in part of the EU for the purpose of refusing to register a CTM.
In the light of all those factors, the Board erred in concluding that there was no likelihood of confusion between the IC4 and ICE trade marks. Consequently, the contested decision is annulled, as, by virtue of the alteration of that decision, the decision of the OD.
OMNICARE CLINICAL RESEARCH: T-289/09; Board's case: R0401/2008-4; OD case: B414088 and 000414088; CTMA No: 1715754; Judgment of 09/09/2011; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)
FACTS: Omnicare, Inc. filed a CTMA for the word mark OMNICARE CLINICAL RESEARCH for goods in Class 42 namely “Conducting clinical and laboratory research for others, excluding urologists, in the field of pharmaceuticals”. Yamanouchi Pharma GmbH – whose rights have been taken over by Astellas Pharma GmbH – filed a notice of opposition based on the earlier German mark represented as follow, registered for goods in Classes 35, 41 and 42. The grounds for opposition were those laid down in article 8.1 (b).
CTMA | Earlier TM |
OMNICARE CLINICAL RESEARCH |
The Opposition Division rejected the opposition.
The opponent lodged an appeal before the Board. The Board allowed the appeal.
The applicant filed an appeal before the General Court.
SUBSTANCE: The action is dismissed.
Sole plea: infringement of Article 8.1 (b)
Comparison of the signs
First, the applicant submits that, in a document which originates from the German Trade Mark and Patent Office, it is stated that the name of the earlier mark is MINICARE. It considers that the inclusion of the first letter ‘i’ is a typographical error. By contrast he considers that the omission of the letter ‘o’ cannot be considered an error. He submits that the person who examined that compound mark considered that the first letter of the word element was ‘m’, and that the logo which preceded that letter was not a letter or a stylised letter.
According to the applicant, since that was how the mark was perceived by the German Trade Mark and Patent Office, it is also how it will continue to be perceived by the relevant public. The applicant submits that it must therefore be found that the marks at issue differ visually, phonetically and conceptually.
Although the OD rejected the opposition, it did not, however, uphold the applicant’s arguments in that regard and considered that the earlier mark was OMNICARE, in which the letter ‘o’ is stylised and constitutes a figurative element.
The intervener appealed against the decision of the OD but without calling into question the latter’s reasoning in relation to the visual and phonetic similarity of the signs at issue and the conceptual identity of their common element “omnicare”. The Board merely upheld the findings of the OD and thus considered that the earlier mark was perceived by the relevant public as being OMNICARE.
As for the Court, it notes that, the Board stated that the OD had taken account of decisions which had been given by German courts, at first instance and on appeal, in the context of a dispute between the applicant and the intervener concerning an application for the annulment of that mark on grounds of lack of use.
The applicant maintains that the evidence furnished by the intervener in that regard is inadmissible but in the GC’s view, they are admissible items of evidence. Those items are factual evidence submitted by the intervener before the OD and, as is evident from the latter’s decision, constitute evidence of which the Board of Appeal was aware and featured among the evidence on which it based its assessment.
The German Courts too considered that the earlier mark was OMNICARE and not MNICARE or MINICARE.
Nonetheless, the applicant continues to submit that the earlier mark is perceived by the relevant public as being MNICARE without submitting any evidence to support its argument.
Consequently, the GC finds that the Board was right to consider that the earlier mark was perceived as being OMNICARE by the relevant public. Moreover, in so far as concern the comparison of the earlier mark and the mark applied for, it is apparent from the decision of the OD - whose reasoning was approved by the Board - that the marks at issue are visually similar in so far as they both contain the word “omnicare”.
In the opinion of the OD, the letter “o”, is not visually striking and does not substantially alter the perception of the word “omnicare”. It stated that the CTM applied for contained two additional words, namely “clinical” and “research”, but that the first word was “omnicare”, just as in the earlier mark.
As regards the phonetic similarity, the OD stated it is of a medium degree in the light of the words “clinical” and “research”. In addition, since the marks contain an identical word, they will be perceived, on a conceptual level, as being identical and as meaning “total care” by the relevant public, which would be made up of experts in the medical and pharmaceutical field in Germany. The applicant has not called that analysis into question. Therefore, the Court validates it.
Genuine use
For the applicant, according to case law, when the proprietor of a mark affixes that mark to items that it gives free of charge, there is no intention to maintain or create market shares for those goods. In the applicant’s view, this affirmation should lead the GC to find that those services do not compete with other similar services on the market and that the intervener failed to show genuine use. Moreover, the applicant states that the services at issue and the goods sold are not in the same commercial field, since those goods are pharmaceutical goods and the services provided free of charge are educational services.
However, the GC states that, according to case‑law, the fact that goods and services may be offered free of charge does not prevent genuine use from being shown.
In the present case, it should be noted that the services offered by the intervener, for which the use of the earlier mark is established, are the provision of medical consultancy for medical practice, namely for urological practice, distribution of literature and printed matter for doctors for advertising use, namely urologists, and organisation of lectures, seminars, expositions and fairs for doctors, namely urologists. Consequently, it finds that, by using its mark in such a way, the applicant seeks to create or maintain market shares for those services in the EU (Para.71). Then the Court considers the Board was right in its findings.
Comparison of the services
The applicant submits, in essence, that the mark which it seeks to have registered relates to services which are not aimed at urologists and that the Board wrongly called into question the effectiveness of the limitation of the services it made during the registration process, even though its validity was not at issue.
The GC notes that the services in respect of which registration of the mark was sought are ‘Conducting clinical and laboratory research for others, excluding urologists, in the field of pharmaceuticals’ (Para.85). In its view, the Board did not call into question the validity of the limitation put in place by the applicant, but merely stated that it was unable to make a clear distinction between the services at issue whereby it could consider that those services were not similar. The applicant does not dispute that the services at issue are similar to a very large extent but merely claims that, in the light of its limitation, the potential customers will be different.
However for the GC, it cannot be ruled out that clinical and laboratory research for certain pharmaceutical products, even if not medicinal products used in urology, may be of interest to urologists or influence their practice, since urologists cannot be excluded as a target group in larger-scale or horizontal research, for example, into cancer, infections, stem cells or gene therapy (Para.91). Consequently, it found that the Board was right to conclude that the services at issue were similar, in spite of the limitation made by the applicant.
ERGO: T-382/09; Board's case: R44/2008-4; OD case: B731929 CTMA No: 3292638; Judgment of 09/09/2011; Language of the case: DE (Action partly upheld)
FACTS: Ergo Versicherungsgruppe AG filed a CTMA for the word mark ERGO for goods in Class 5 and 10 namely “Material for stopping teeth, dental wax” and “Equipment and dental instruments, respectively”. DeguDent GmbH filed a notice of opposition based on the earlier verbal CTM CERGO registered for goods in Class 10 “furnaces used in the production of prostheses and dental implants” and “furnaces used in the production of dental prostheses”.
The grounds for opposition were those laid down in article 8.1 (b).
CTMA | Earlier CTM /rights |
ERGO |
CERGO |
The Opposition Division partially upheld the opposition.
The applicant lodged an appeal before the Board. The Board of Appeal dismissed the appeal.
The applicant filed an appeal before the General Court.
SUBSTANCE: The action is partly upheld. The parties respectively have to bear their own costs.
1. First plea: Failure to rule on the application for registration in respect of the goods within Class 5
In its first plea, the appellant argued that, by failing to rule on the application for registration in respect of the goods covered by the mark in Class 5, the Board infringed the obligation to rule on the entire subject of the appeal, its obligations under Article 42 (5) first sentence, read in conjunction with Article 64 (1), first sentence and Article 76 (1) second phrase CTMR.
The GC recalls in this regard that the Board has to state on every head of claim alleged by the applicant and that a decision of the Board only takes effect only once the 2 months deadline form the notification date expired.
In the present case, the Board found that, with regard to products in Class 5, the application to register the word mark ERGO was finally rejected in the case R515/2008-4 and therefore the appeal brought before it was irrelevant in respect to these products.
However, the GC observes that an appeal was filed against the decision in this case, registered under number T-220/09, for its annulment in that it confirmed the decision of the OD refusing registration of the mark ERGO, particularly for products in Class 5 at issue in this case.
In those circumstances, the Board erred in its findings. Therefore, the decision has to be annulled in that it omits to state on the plea of the applicant regarding the goods within Class 5. As a result, the Court would have to state on this plea on substance for the first time. However, such an appreciation does not enter in the Court’s jurisdiction.
2. Second plea: Infringement of Article 8(1) (b) CTMR
The relevant public
The Board considered that the relevant public of the goods at issue was composed of professionals in the field of health, dentistry and mechanics dental. The parties agree on this conclusion and on the fact that a public health professionals display a greater level of attention for the products concerned.
Comparison of the goods
The applicant disputes the first conclusion of the Board concerning the existence of a similarity at a minimum average between the products in question. It argues that these products are not similar because they are intended to different consumers (Para.30).
However, for the GC, there is no indication that a broad definition of the goods and services covered by the mark include, as argued by the applicant, only the instruments used by dentists and would not apply, however, to the instruments used by dental technicians. Indeed, insofar as they carry out activities under the treatment of teeth, both dentists and dental technicians use tools that can be included in the general category of “dental equipment and instruments” under the mark applied for (Para.34). In addition, dental technicians use both dental instruments covered by the mark applied for and the furnaces covered by the earlier marks (Para.34 to 40).
Thus, the Court considers the applicant cannot assert that there is no complementarity between the goods at issue and concludes the Board did not erred in finding there is an at least average similarity between the products.
Comparison of the signs
The GC notes that that the only difference between the signs at issue is the additional letter placed at the beginning of the earlier word mark (Para.45). In the present case, it is true, that the signs at issue are both short and that they are composed of two words of four and five letters respectively, it is, however to notice that the CTM applied for is entirely included in the verbal earlier sign. Therefore, the GC considers that the case law according to which the beginning of the word is important in the overall impression of the sign cannot apply in this case and concludes that there is a strong visual similarity between the signs at issue.
As regard the phonetic comparison, the applicant argues that the initial letter of the earlier sign, namely the letter “c”, regardless of how it is pronounced in different European languages, would greatly differ from the sound of the first letter “e” of the mark applied for. In this regard, the Court upheld the findings of the Board which considered that the two signs both consist of two syllables, pronounced according to the same rhythm, intonation and even with the same sequence of vowels 'eo'. Thus, the only distinguishing feature between the phonetic signs in question results from the pronunciation of the additional consonant placed at the beginning of the earlier sign. Moreover, it is not able counterbalance the overall impression of phonetic similarity that arises from the fact that the letters "ergo" in the mark applied for are entirely included in the earlier word mark (Para.55). Therefore the GC finds that the signs are phonetically similar.
Regarding the conceptual similarity, the applicant also challenges the conclusion of the Board of Appeal according to which the effect of the conceptual comparison of the signs in question is neutral because the mark applied for cannot be associated with any concrete concept. The word “ergo” would have no other meaning than the word “therefore”. Thus, the relevant consumers immediately understands the meaning, which is not related to the products concerned, giving it a particular originality so that it would be seen as surprising by consumers. So there would be a clear conceptual difference between the two signs.
In this respect, the Court observes that the world CERGO does not have any signification in any European language whereas the world ergo is a Latin word meaning “thus” or “consequently”. Nevertheless, this term is not used in common language, but rather, is an abstract term having essentially a legal or philosophical connotation, used rarely and the pertinent public is not deemed to have deep knowledge in Latin and understand immediately the meaning of this word. In those circumstances, the Board has not erred in finding that the conceptual comparison between the signs was neutral (Para.60).
Likelihood of confusion:
The Board of Appeal concluded that, given the average distinctiveness of the earlier marks and the similarity at least average of the products in question, the differences between the signs in question were not sufficient to exclude the risk of confusion between the signs (Para.61).
In the light of all the above considerations, the GC also states that there is a likelihood of confusion.
AGATHA RUIZ DE LA PRADA: T-522/08 and T-523/08; Board's case: R1523/2007-1 and R1522/2007-1; OD cases: B732414 and B716987; CTMA No: 3291234; Judgment of 13/09/2011; Language of the case: ES (Action dismissed; Board and Office's practice confirmed)
FACTS: Agatha Ruiz de la Prada de Sentmenat filed a CTMA for the figurative mark represented below for goods in Classes 3, 4, 5, 8, 9, 11, 12, 14, 16, 18, 19, 20, 21, 24, 25, 27 and 28. Mary Quant Cosmetics Japan Ltd filed a notice of opposition based on the earlier figurative CTM registered for goods in 9, 14, 16, 18, 20, 24, 25 and 26 directed to the Classes 3,5, 14 and 21 of the CTMA. The grounds for opposition were those laid down in Article 8.1 (b) CTMR. The Opposition Division rejected the opposition.
CTMA | Earlier CTM |
The opponent lodged an appeal before the Board. The Board partly upheld the appeal by rejecting the registration for goods in Class 3. The applicant filed an appeal before the General Court
The applicant has to bear the costs.The applicant first requires the Court to register the CTM but the GC rejects it being not competent for it.
Sole plea: Infringement of Article 8(1) (b) CTMR The relevant public
The applicant submits that the products in Class 3, for which registration has been denied, namely “soaps, perfumery, essential oils, cosmetics, hair products and lotions” are not commonly used so that the audience pays considerable attention to brands. In this case, this would be even more so, since the relevant products bear the mark of the applicant, who is a famous designer (Para.26).
However, the GC states in this respect that the fact remains that products such as soaps, cosmetics and hair lotions are common items for which the degree of attention of the relevant public does not exceed the level of the relevant public selected by the Board. In addition, when the public is likely to pay more attention to certain brands in this sector, this is because of the positive image and reputation that such marks have acquired as a result of significant advertising efforts and not because of the nature of the products in question (Para.27).
Similarity of the products
The applicant does not dispute the similarity of the goods at issue but claims that they are sold in their own shops or in reserved areas in general stores.
The GC in this regard recalls that the similarity of the goods has to be assessed in the light of all relevant factors which characterize the relationship between these products, those factors including, in particular, their nature, purpose, use and the fact if they are in competition or are complementary. Moreover, the GC agrees that other factors may also be taken into account, such as the distribution channels of the products concerned. However it recalls that the existence of a similarity between the goods in question and, more broadly, a confusion between the marks can not be made dependent on criterions such as the method of distribution chosen by the holders of the marks (Para.32).
Similarity of the signs
The GC first recalls that, accorging to settled case law, the appreciation of the visual, aural or conceptual similarity of the signs must be based on the overall impression created by them, taking particular account of their distinctive and dominant components (Para.33).
It adds that, a complex mark, composed of a word and a figurative element can only be considered comparable to another brand identical or similar to one of the component of the complex mark, if it is the dominant element in the overall impression produced by the complex mark (Para.34).
In the present case, the GC notes, first, that the earlier mark consists of a single figurative element, namely a black flower, consisting of five petals, which are perfect geometric and symmetrical shapes and secondly that the mark applied for is composed of a figurative element consisting of a flower of five magenta petals and a yellow heart, presented on a green background, as well as the word “Agatha Ruiz de la Prada”, written in small capital letters in the bottom, on the right side. Therefore the GC considers, as the Board did, that the dominant element of the mark applied for is the figurative element, since it plays an important role compared to the verbal element (Para.35 and 36).
Regarding the visual similarity, the Board found that there is a clear visual similarity between the marks, bearing in mind that they were, each composed of a flower with five petals and a circle of similar shape in the centre of the flower, this similarity not being affected by the colours of the CTM applied for (Para.37)
As for the GC, it highlights the differences between the TM at issue lying in the colours used and in the fact that while the earlier mark consists of a geometrically perfect and symmetrical flower, the mark applied for consists of a flower looking like a drawing of child, whose forms are uneven and jagged edges (Para.40). However, it finally considers that those differences are not sufficient to outweigh the visual similarity between the signs in the light of the various common elements of the signs (Para.41).
It adds that the Board did not make an error by rejecting the argument based on the colours of the mark applied for.
Regarding the phonetic comparison the Board considered that no comparison was possible at all, the earlier mark being exclusively figurative (Para.37).
Regarding the conceptual similarity the Board found an identity between the earlier TM and the figurative element of the mark applied for. The applicant claims that the Board failed to take into account the fact that, contrary to the earlier TM, the mark applied for consist in a grotesque representation of a flower, brightly coloured, placed on a coloured background (Para.46). The GC however rejects the argument as being irrelevant in the assessment of the conceptual similarity (Para.47) and after recalling the common elements of the signs concludes that the Board was right to find their were similar conceptually and visually (Para.49).
Likelihood of confusion
The applicant disputes the analysis of the Board claiming that where the earlier mark does not enjoy a specific reputation and consists of an image with little imaginative content, the mere conceptual similarity between the marks is not enough to create a likelihood of confusion (Para.51).
However, the GC gives little importance to this argument since the Board actually stated on other grounds namely the visual similarity.
In addition, the applicant alleges that the earlier TM has a low degree of distinctiveness, and in support of its argument, refers to the existence of numerous registrations where a representation of a flower similar to the one of the mark applied for. However, the GC considers this piece of evidence in itself is not sufficient to demonstrate a low degree of distinctiveness, adding that the earlier TM is not descriptive of the goods it designates (Para.57).
It also rejects the argument based on the reputation of the applicant because only the reputation of the TM can be taken into account in the assessment of the likelihood of confusion (Para.59).
