Average consumer more readily refers to goods by name than by describing figurative element of mark

European Union

In Iglotex SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-282/13, April 23 2015), the General Court has upheld a decision of the Second Board of Appeal of OHIM finding that there was a likelihood of confusion between the marks IGLOTEX and IGLO.

Iglotex SA, a Polish company, filed an application for the registration of the following figurative sign as a Community trademark:

The goods for which registration was sought fell in Classes 29 and 30 of the Nice Classification and corresponded to, among other things, "frozen fish products; frozen fish and seafood" and ‘ice cream; frozen yoghurts; edible ices; ice; powders for ice cream; water ices; chilled desserts". The registration was opposed by Iglo Foods Group Ltd, based on, among other things, the earlier Community word mark IGLO, registered in Classes 29 and 30 for frozen prepared meals, ices and ice, among other goods.

The Opposition Division of OHIM upheld the opposition and the Second Board of Appeal dismissed the appeal.

Concerning the comparison of the signs, the Board of Appeal found, as regards the visual aspect, that while the figurative elements were not negligible in the mark applied for, the word element ‘iglotex’ played at least an independent role in it. However, due to the fact that the earlier mark coincided with the first letters of the word element in the mark applied for, and since consumers generally tend to focus on the first part of a word element, the Board of Appeal concluded that the signs were visually similar. As regards the phonetic aspect, although the ending of the mark applied for differed from that of the earlier mark and there was a possible difference in where the stress was placed for part of the relevant public, the Board of Appeal found that, at least as regards the remainder of that public, the signs were phonetically similar. Concerning the conceptual aspect, the Board of Appeal upheld the Opposition Division’s finding that there was a conceptual similarity for the part of the relevant public capable of identifying the common concept conveyed by the word ‘iglo’ in both the mark applied for and the earlier word mark. 

Taking into account the normal inherent distinctiveness of the earlier mark, the Board of Appeal concluded that there was a likelihood of confusion.

The General Court upheld the arguments of the Board of Appeal and dismissed all the arguments brought forward by Iglotex on appeal.

In respect of the similarity of the marks, the court underlined that, where a trademark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the mark.

As regards the word ‘iglo’, Iglotex’s argument that that word is descriptive with respect to frozen and refrigerated products, and therefore weakly distinctive, was not relevant since this would not imply, in any event, that it must be considered negligible on its own. Similar considerations could be invoked with regard to the suffix ‘tex’. Even if the latter were sufficiently distinctive, as Iglotex claimed, the fact remained that it is simply a suffix which does not in any way stand out from the word element containing it. None of the figurative or word elements was capable on its own of dominating the image of the mark applied for or of being totally disregarded in the overall impression created by that mark.

As regards the depiction of the penguin, the Board of Appeal had rightly taken the view that, although that depiction was not particularly distinctive in relation to frozen or refrigerated goods, it was not to be overlooked because of its size and position in the sign. This did not, however, confer on that depiction a dominant nature in the overall impression produced by the mark applied for. As regards the word element ‘iglotex’ taken as a whole, that element was clearly legible in the mark applied for and not negligible in size.

As regards the visual similarity, the court found that, given that the element ‘iglo’, which is the sole component of the earlier mark, was included in its entirety within the mark applied for, the signs at issue were partially identical in such a manner as to create a certain impression of visual similarity in the mind of the relevant public. In respect of the phonetic similarity, the court pointed out that two of the three syllables were identical in the marks at issue and only the syllable ‘tex’, positioned at the end of the sign applied for, was different. In this regard, it was apparent from the case law that the first part of a mark tends to have a greater visual and phonetic impact than the final part. The common concept relating to the igloo would probably be perceived by the consumer in the two signs at issue, thereby giving rise to a degree of conceptual similarity.

Finally, in respect of the likelihood of confusion, the General Court held that, taking into account the identical nature or high degree of similarity of the goods at issue, the elements of similarity between the marks at issue and the fact that the relevant public was the average consumer, whose level of attention is normal, if not low, the Board of Appeal had acted correctly in concluding that there was a likelihood of confusion between the marks at issue in the mind of the relevant public.

Paul Steinhauser, Bloemendaal

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