Advocate general strongly criticizes General Court's decision on surname

European Union
Advocate General Cruz Villalón has issued his decision in Becker (Case C-51/09 P, March 25 2010), an appeal by Barbara Becker against a General Court decision (Case T-212/07, December 2 2008) in which the latter had held that her full name was confusingly similar to her husband's surname.
Barbara Becker, formerly married to tennis champion Boris Becker, applied to register her name as a Community trademark (CTM) for a variety of goods in Class 9 of the Nice Classification. Harman Int Industries opposed, citing its earlier CTM BECKER ONLINE PRO and an application for the CTM BECKER, both for identical and similar goods in Class 9.
The Opposition Division of the Office for Harmonization in the Internal Market (OHIM), taking the view that there was a likelihood of confusion between the marks at issue, upheld the opposition. Barbara Becker appealed successfully to the First Board of Appeal of OHIM.
Considering, for reasons of procedural economy, only the earlier mark BECKER and the mark BARBARA BECKER, the Board of Appeal merely found that, visually and phonetically, there was some degree of similarity between the marks, given that another component - the first name Barbara - was placed at the start of the mark applied for. Conceptually, the marks were clearly distinct, since the surname Becker was not the dominant and distinctive element of the mark applied for, on account of the fact that the relevant public would perceive the mark in its entirety, rather than as a combination of the first name and surname. The board also noted that Barbara Becker had "acquired celebrity status" in Germany, while the name Becker was generally recognized as an ordinary and widespread surname. Finally, the board held that the condition for the application of Article 8(5) of the Community Trademark Regulation (40/94) had not been satisfied, since it requires such a degree of similarity between the marks that the relevant public establishes a link between them.

Harman brought an action before the General Court, which held that the board had wrongly stated that the marks at issue were clearly distinct. Regardless of the greater or lesser differences between the two marks visually and phonetically, the court rejected the board’s assessment of the relative importance of the component ‘Becker’ compared to the component ‘Barbara’ in the mark BARBARA BECKER.
First, the court considered that, even if the perception of marks consisting of personal names can vary in the different countries in the European Union, at least in Italy consumers generally attribute greater distinctiveness to the surname than to the forename contained in trademarks. It followed that the surname Becker was likely to have attributed a stronger distinctive character to the mark BARBARA BECKER than the first name Barbara.
Second, the court rejected the argument that the fact that Barbara Becker enjoyed celebrity status in Germany as the former wife of Boris Becker did not mean that, conceptually, the marks at issue were not similar, as both marks referred to the same surname Becker. Such similarity was reinforced by the fact that, in part of the European Union, the component ‘Becker’ is likely to be attributed a stronger distinctive character than the component ‘Barbara’, which is simply a first name.
Third, the court cited the judgment in Medion (Case C-120/04), in which it was held that a composite mark, created by the juxtaposition of a component and the sign of another earlier registered mark, may be regarded as similar to that other mark where the latter has an independent distinctive role in the composite mark, even though it is not the dominant component. Applying that criterion, the court found that the component ‘Becker’ was a surname which was commonly used to describe a person, retaining an independent distinctive role in the mark BARBARA BECKER, which was sufficient for a finding of a likelihood of confusion. Finally, given that the parties did not deny that the goods at issue were identical or similar, and also taking account of the visual and phonetic similarities of the marks BARBARA BECKER and BECKER, there was a likelihood of confusion between the marks, even though the goods were directed at a public with a relatively high level of attention.
Barbara Becker appealed to the Court of Justice of the European Union, and on March 25 2010 Advocate General Cruz Villalón delivered an opinion strongly critical of the General Court's decision.
The advocate general stated as follows:
"It is abundantly clear... that, if the court in the judgment under appeal wished to base its reasoning definitively on the doctrine in Medionin order to assess the likelihood of confusion between the marks at issue,... it had to explain why exceptionally in that case it was necessary to dispense with the general requirement with respect to an application for a composite trademark to examine the overall impression, bearing in mind, in particular, its distinctive and dominant components. In other words, it should have dealt with, in that context, the possible conceptual similarity between ‘Barbara Becker’ and ‘Becker’, because in this case it is not necessary for the component ‘Becker’ to have a dominant position in the mark as a whole."
However, there was scarcely any consideration to be found in the decision of the General Court other than that that ‘Becker’ was a surname, which would be hard to refute.
Moreover, the advocate general stated that:
"the judgment now under appeal makes no observations or assessment of the surname Becker in order to determine whether it retains an independent distinctive role, without necessarily constituting the dominant element in the mark as a whole, to which the judgment in Medionrefers, whereas, in the circumstances of the case, it was essential to carry out an assessment of the distinctive character of the earlier mark BECKER. Since the latter had enjoyed a high level of notoriety with the public, any other mark which sought to designate identical goods would have more difficulties in appropriating that surname."
Therefore, based on a partly incorrect understanding of the combined effects of the judgments in Fusco (Case T-185/03) and Medion, the General Court's decision could give rise to the belief - wrong in itself - that any surname which coincides with an earlier mark may prevent registration of a composite mark including a first name and the surname in question based on a likelihood of confusion within the meaning of Article 8(1)(b).

The advocate general further stated that:
"the result of adding a purported rule of principle derived from a previous judgment of the Court of First Instance to another from a judgment of the Court of Justice appears to lead to a result which is almost inevitable, which is that the issue of conceptual similarity is practically superseded in as much as the court failed to take account of all the facts of the case, as it was required to do in accordance with the case law. Most particularly, it failed to examine the influence of the first name from a conceptual point of view of the mark BARBARA BECKER, and the greater or lesser degree of distinctiveness of a mark composed of a single surname."
The advocate general thus concluded that the General Court's decision was vitiated by an error of law, and that the judgment should be set aside. The advocate general suggested that the case should be remitted to the General Court in order for the latter to undertake those assessments and give another ruling consistent with them.
Jeremy Phillips, IP consultant to Olswang LLP, London

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