Bulls and bulldogs held to have "conceptual link"
In Red Bull GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-78/13), the General Court has annulled a decision of the Second Board of Appeal of OHIM finding that there was no likelihood of confusion between the mark BULLDOG and the earlier word mark BULL.
On July 1 2010 Sun Mark Ltd filed an application for registration of the Community word mark BULLDOG with OHIM. The application was published in the Community Trademarks Bulletin No 170/2010 of September 10 2010.
The goods in respect of which registration was sought fell within Classes 32 and 33 of the Nice Classification. During November 2012 Sun Mark requested OHIM to restrict the list of goods by removing those in Class 33 and removing “beers” from the list of goods in Class 32. Following the restriction, the goods covered by Sun Mark’s application were “mineral and aerated waters, energy drinks, isotonic drinks; (non-alcoholic) aerated drinks (and beers), fruit-flavoured aerated drinks; fruit drinks and fruit juices; non-alcoholic drinks”.
On December 3 2010 Red Bull GmbH filed a notice of opposition against the registration of the mark, relying on the grounds referred to in Articles 8(1)(b) and 8(5) of the Community Trademark Regulation (207/2009). The opposition was based on:
the international word mark BULL (No 867085), covering goods in Class 32 and registered on July 15 2005, having effect within the territory of the European Union;
the Austrian word mark BULL (No 246682), covering goods in Class 32 and registered on August 29 2008;
the Austrian word mark RED BULL (No 242873), covering goods in Classes 32 and 33 and registered on January 15 2008;
the international word mark RED BULL (No 961854), covering goods in Class 32 and registered on March 19 2008, having effect within the territory of the European Union; and
the international word mark RED BULL (No 972114), covering goods in Class 33 and registered on March 19 2008, having effect within the territory of the European Union.
On November 17 2011 the Opposition Division of OHIM upheld the opposition in its entirety. Sun Mark filed a notice of appeal with OHIM.
By decision of November 16 2012, the Second Board of Appeal of OHIM upheld the appeal and annulled the decision of the Opposition Division. The board acknowledged that the goods covered by Sun Mark’s trademark application were identical to those covered by Red Bull’s earlier word marks. However, the board found that the mark applied for and the earlier marks could not be regarded as similar because of their significant conceptual differences. Consequently, there was no likelihood of confusion for the purposes of Article 8(1)(b). With regard to Article 8(5), the board stated that, since the marks at issue were overall different, one of the conditions laid down in Article 8(5) (the identity or similarity of the marks at issue) had not been satisfied. Thus, Red Bull’s claims grounded on that provision were rejected.
On February 7 2013 Red Bull lodged an application with the General Court, seeking the annulment of the board’s decision. In support of its application, Red Bull alleged infringement of Articles 8(1)(b) and 8(5). Before the General Court, Red Bull limited – “for reasons of procedural economy” – the scope of the first plea to the board's assessment of the likelihood of confusion between the mark applied for and the earlier BULL marks (bullet point 1 and 2 above).
The General Court initially examined whether there had been an infringement of Article 8(1)(b) (likelihood of confusion), which presupposes the fulfilment of two cumulative conditions: (i) the goods or services covered by the marks are identical or similar, and (ii) the marks at issue are identical or similar.
The General Court stated that the board had defined and considered the relevant public correctly by pointing out that:
the relevant public was, on the one hand, that to be found in Austria (due to the Austrian word mark BULL) and, on the other, that to be found in the European Union (due to the international word mark BULL);
the vast majority of the relevant public was not English-speaking; and
the relevant public was the general public, which was deemed to be reasonably well informed, reasonably observant and circumspect.
Since the goods covered by the marks in question were identical, the first of the two cumulative conditions was satisfied.
The General Court then clarified that two signs are considered similar if the relevant public considers them to be partially identical on one or more relevant aspects by comparing the signs visually, phonetically and conceptually. The court noted that consumers will generally pay greater attention to the beginning of a word sign than to the end. The first four letters of the two signs at issue - 'B', 'U', 'L' and 'L' - were identical. In the case of relatively short signs, the General Court held that the fact that the first four letters - constituting all the letters making up the earlier word marks and the majority of those forming the mark applied for (four out of seven) - were identical was sufficient to find that the board had erred in finding the signs to be “similar to a rather low degree”. Given that a difference consisting in a single consonant could be enough to prevent the finding of a high degree of visual similarity between two relatively short word signs, the General Court concluded that the degree of visual similarity between the signs was average.
The General Court then agreed with the board that the syllable 'dog' in the mark applied for, the pronunciation of which produced such a hard sound, constituted a feature so distinguishing that the signs at issue could not be regarded as having a high degree of similarity. Thus, the General Court found that the degree of phonetic similarity should be considered as average – and not as fairly low as stated by the board – since the relevant public would place greater importance on the first part of the signs.
Since the vast majority of the relevant public was non-English speaking, the General Court pointed out that the conceptual comparison could influence the assessment of the similarity of the signs at issue only if the signs were likely to be understood by the relevant public. This was not possible for the majority of the non-English-speaking public, but the English-speaking public would recognise that the signs at issue refer to two separate animals. Nevertheless, both conveyed the image of animals from which a concentrated force emanates. Against this background, the board had erred in finding that the signs were not conceptually similar, and the General Court concluded that the signs resembled one another overall.
As to the actual likelihood of confusion, the General Court held that the board had failed to take into account the fact that the products at issue were identical and that the signs were similar overall. Therefore, there was a likelihood of confusion between the marks at issues, and the General Court annulled the decision of the board.
Nina Ringen, Rønne & Lundgren, Copenhagen
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