Court dismisses claim that "English is not generally understood by Portuguese consumers"

European Union

In Aloe Vera of America Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-528/11, January 16 2014), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM refusing the registration of the figurative trademark FOREVER on the grounds that there was a likelihood of confusion with the earlier figurative trademark 4 EVER within the meaning of Article 8(1)(b) of the Community Trademark Regulation (207/2009).

In late 2006 Aloe Vera of America Inc filed an application for registration of the following figurative sign as a Community trademark (CTM) in respect of, among other things, “aloe vera juice, aloe vera gel drinks and aloe vera pulp; aloe vera juice mixed with fruit juice(s); and bottled spring water” in Class 32 of the Nice Classification:

A Portuguese company, Diviril - Distribuidora de Viveres do Ribatejo Lda, filed an opposition based on an earlier Portuguese figurative mark (No 297697) registered on April 11 1995 and renewed on August 9 2005 in respect of “juices, lime lemon juices - exclusively for exportation”, also in Class 32:

In essence, the opposition was based on Subparagraphs (a) and (b) of Article 8(1) of the regulation - that is:

  • the likelihood of confusion among the public of the territory where the earlier trademark is protected (Portugal); and
  • the similarity of the services covered.

The Opposition Division of OHIM upheld the opposition. The applicant filed an appeal, which was dismissed by the Fourth Board of Appeal of OHIM.

The applicant filed an appeal to the General Court, relying essentially on two pleas in law:

  1. infringement of Article 42(2) and (3) of the regulation (proof of genuine use of the earlier trademark in the member state in which it is protected, during the period of five years preceding the date of publication of the CTM application); and
  2. infringement of Article 8(1)(b) of the regulation (likelihood of confusion as a consequence of the similarity of the mark applied for to the earlier trademark and the similarity of the goods and services covered by the trademarks).

In the course of the proceedings, the applicant had asked the Portuguese company to submit proof of genuine use of its trademark. In response, the Portuguese company had submitted a series of invoices. On appeal, the applicant alleged that those invoices were insufficient for the purpose of furnishing proof of genuine use within the meaning of Article 42(2) and (3) of the regulation.

To assess whether there had been genuine use of the earlier mark, the General Court relied on the VITAFRUIT decision (Case T-203/02), and stated that such assessment must take into consideration all circumstances relevant to establishing whether the commercial exploitation of the trademark is real. Following this line of reasoning, the court stated as follows:

The turnover and the volume of sales of the goods under the earlier trademark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trademark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine ([see VITAFRUIT and HIPOVITON]). Even minimal use can therefore be sufficient to be classified as genuine, provided that it is justified, in the economic sector concerned, to maintain or create market share for the goods or services protected by the mark. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not.

In light of the principles set forth in VITAFRUIT, the court rejected the applicant’s first plea, stating as follows:

  • The 12 invoices submitted by the Portuguese company to prove genuine use during the relevant period (the five years preceding the CTM application) related to deliveries of fruit juice bottles to seven customers located in Portugal. Consequently, there was no doubt that these goods were intended for the Portuguese market, which was the relevant market.
  • Even though the value of the fruit juices marketed under the earlier trademark was low, the invoices suggested that the goods were marketed regularly during a period that was neither too short nor too close to the publication of the CTM application.
  • The volume of sale in relation to the relevant period and the frequency of use was not so low that it could be concluded that the use was merely symbolic, especially if it was taken into account that Portugal is relatively small in size and population.
  • The fact that the 12 invoices were made out to only seven customers did not change this conclusion, as it was sufficient that the trademark was used publicly and outwardly, and not solely within the company.

Consequently, the court ruled that, although the extent of use of the earlier mark was relatively limited, the Board of Appeal had not erred in concluding that the evidence submitted by the Portuguese company was sufficient for a finding of genuine use.

In its second plea, the applicant argued that, in determining that there was likelihood of confusion, the Board of Appeal had not taken into consideration the pronunciation of the marks at issue for the purposes of the phonetic comparison, and that it had not correctly identified the conceptual and visual differences between those marks.

Regarding the visual comparison, the applicant claimed that there was no visual similarity at all, while the Board of Appeal had found that there was a low degree of visual similarity. The court recalled the case law according to which:

in the case of a mark consisting of both word and figurative elements, the word elements must generally be regarded as more distinctive than the figurative elements, or even as dominant, in particular since members of the relevant public will keep the word element in their minds to identify the mark concerned, the figurative elements being perceived more as decorative elements.

Consequently, the court confirmed the Board of Appeal’s conclusion that there was a low degree of visual similarity.

With regard to the phonetic comparison, the Board of Appeal had determined that the part of the public having a certain knowledge of English would pronounce the two marks identically, and that only the part of the Portuguese public that is not familiar with English would pronounce the two marks differently (ie, 'CU/A/TRO/E/VER' and 'FO/RE/VER'). In the first case, the marks should be considered to be aurally identical; in the second case, similar to a medium degree.

The applicant contested this finding arguing that, in general, the English language is neither spoken nor understood by Portuguese consumers and that it was “far from certain” that the average Portuguese consumer would recognise the combination of the number 4 and the word ‘ever’ as being derived from English, rather than as a fanciful word.

The court stated that, even though it could not be stated that the majority of the Portuguese public speaks English fluently, it was nevertheless reasonable to assume that a relevant part of that public had a basic knowledge of the language which enabled it to understand and pronounce basic words such as ‘forever’ or numbers below 10 in English. Furthermore, with today's widespread use of ‘SMS language’ and the Internet, the use of the number 4 as referring to the word ‘for’ could be considered to be common.

The court thus upheld the Board of Appeal’s decision with regard to the phonetic similarity of the marks.

Concerning the conceptual comparison, the court agreed with the interpretation of the Board of Appeal that the part of the public that is familiar with English would perceive the same idea of “without end, eternal” in the two marks, whilst the part that is not familiar with English would not associate the marks conceptually. This finding could not be called into question by the presence of the image of a bird of prey in the mark applied for, as that representation did not introduce any particularly specific or striking concept of its own, or add to, clarify or alter the meaning of the English word ‘forever’.

Taking all these factors into consideration, the court upheld the findings of the Board of Appeal that the distinctive character of the earlier mark was normal, the level of attentiveness of the relevant public was average, and the goods concerned were in part identical and in part similar. Therefore, there was a likelihood of confusion between the marks.

One of the interesting aspects of this decision is the way in which the court relied on VITAFRUIT. The main finding of the VITAFRUIT decision was that the assessment of genuine use should be made on a case-by-case basis. In the present case, the General Court relied not only on that rule, but also on the decision in that specific case. In VITAFRUIT, the General Court had held that the delivery to a single customer in Spain of 3,516 bottles of concentrated fruit juices, confirmed by about 10 invoices and representing sales of approximately €4 800, during a period of 11-and-a-half months, constituted genuine use of the earlier mark. In the present case, even though it did not directly compare the Spanish and Portuguese markets, the court drew a parallel between the two situations and determined that, despite the low number of invoices, low turnover and low number of customers, genuine use of the earlier mark had been demonstrated, just like had been the case in VITAFRUIT.

Another noteworthy aspect is that the applicant so readily claimed that there was no phonetic similarity between the marks based on the alleged lack of English skills of the general Portuguese public. One may wonder why a Portuguese company operating in the Portuguese market would choose to register as a Portuguese trademark a sign that is totally unintelligible for the relevant public. Moreover, even if, as claimed, “English is not generally spoken and understood by the Portuguese customers”, the applicant’s argumentation completely ignores the marketing aspect of trademarks, without which they would not survive. Arguably, trademarks are not known solely based on what consumers read, but also based on what they perceive via the message that is transmitted to them, in particular through the trademark owner's marketing efforts (applying the applicant’s line of thought, the expression '7Up' would be read by the average Portuguese consumer literally as 'SETE/UP').

Manuel Lopes Rocha and Carolina Leão d’Oliveira, PLMJ - AM Pereira Sáragga Leal Oliveira Martins Júdice E Associados - Sociedade De Advogados - RL, Lisbon

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