Board of Appeal decision annulled in AGILE Case

European Union
In Peek & Cloppenburg v Office for Harmonization in the Internal Market (OHIM) (Case T-386/07, October 29 2009), the Court of First Instance (CFI) has annulled a decision of the Second Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the figurative trademark AGILE and the earlier mark AYGILL for sports equipment and clothing.
On April 10 2002 Redfil SL filed an application for the registration of the figurative mark AGILE as a Community trademark (CTM) for sports equipment and clothing in Classes 18, 25 and 28 of the Nice Classification. On July 18 2003 Peek & Cloppenburg opposed Redfil's application on the basis that it was confusingly similar to its earlier word mark AYGILL, which was registered as a CTM in the same classes.

The Opposition Division allowed the opposition, holding that there was a likelihood of confusion between the marks. On appeal, the Second Board of Appeal of OHIM rejected the opposition in its entirety, holding that despite the inherently distinctive character of the earlier mark and the identity of goods, there was no likelihood of confusion between the marks. The board indicated that although the marks were phonetically similar in French, they were not similar in English. Moreover, they were similar visually only to a low degree. The board concluded that the degree of phonetic similarity between the marks was of less importance than the visual perception of the marks by consumers.
Peek & Cloppenburg appealed, alleging that the board had infringed Article 8(1)(b) of Community Trademark Regulation (40/94). Article 8(1)(b)provides that a trademark shall not be registered if it is opposed by the proprietor of an earlier mark on the basis that:
  • the mark applied for is identical or similar to the earlier mark;
  • the goods covered by the marks are identical or similar; and
  • there is a likelihood of confusion on the part of the relevant public in the territory in which the earlier mark is protected.
As the goods were intended for the general public, the relevant public in this case consisted of the average consumer. 
To establish whether there was a likelihood of confusion, the CFI first analyzed existing case law. It started by confirming that two marks are similar when there is at least partial correspondence between them with regard to one or more relevant aspects. The CFI then looked into visual, phonetic and conceptual similarities between the signs. 

With regard to the visual comparison, the CFI held that the board had erred in concluding that there was a low degree of similarity between the marks. As the earlier mark and the mark applied for have in common a majority of the letters of which they are constituted, consumers were likely to perceive the marks as being visually similar despite their different endings. In this regard, the CFI reminded the parties that the consumer generally pays greater attention to the beginning of a mark than to the end.

As to the phonetic comparison, the CFI held that the board was correct to compare the two marks phonetically both in English and in French, and to deduce from this comparison the existence of a phonetic similarity (despite the fact that the marks were phonetically similar in French, but different in English).  

The CFI also agreed with the board that there was no conceptual similarity between the two marks. While the word 'agile' had a clear meaning in several EU languages, the earlier mark AYGILL was entirely devoid of meaning. However, the CFI concluded that the conceptual difference between the marks was not such as to neutralize visual and phonetic similarities.

The CFI concluded that there was a likelihood of confusion between the marks on the following grounds:

  • It could not be said with certainty - contrary to the board's belief - that the visual aspect played a greater role than other aspects at the time of purchase of the goods.
  • The board was wrong to describe the visual similarity between the signs as being of a low degree.
  • Even if the signs were similar only to a low degree, the board erred in finding no likelihood of confusion. The fact that the goods in question were identical offset the low degree of similarity between them.
The CFI thus overturned the board's decision.

Inbali Iserles, Ashurst LLP, London

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