Earlier mark’s distinctive character is only one factor in likelihood of confusion assessment

European Union

In Indo Internacional SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-260/08, January 24 2012), the General Court has upheld a decision of the First Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the marks VISUAL MAP and VISUAL.

On July 21 2004 Indo Internacional SA filed a Community trademark application for the word sign VISUAL MAP for services in Class 44 of the Nice Classification ("Optical services, in particular design and adaptation of customised progressive lenses"). Visual SA filed an opposition under Article 8(1) (b) of the Community Trademark Regulation (40/94) based on the earlier French word mark VISUAL, which was registered for various services in Class 44 (mainly optician's services and medical care in the field of ophthalmology, medical healthcare and beauty).

The opposition was upheld by the Opposition Division, and the First Board of Appeal of OHIM dismissed the appeal. With regard to the relevant public, the board found that it consisted of average consumers and professionals in France. In respect of the services concerned in Class 44, it found that these were identical to the services covered by the earlier mark. With regard to the signs in conflict, the board considered them to be visually, phonetically and conceptually similar. Finally, the board concluded that the identity of the services and the similarity of the signs created a likelihood of confusion on the part of the French public.

Before the court, Indo Internacional alleged that the board had infringed Article 8(1)(b) of the regulation.

The court first reiterated that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and goods or services in question, taking into account all of the factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered.

In this case, the issue was not the similarity of the services but, rather, the relevant public for the purpose of assessing the likelihood of confusion. The relevant public is composed of users likely to use the goods or services covered by the earlier mark and those covered by the trademark applied for.

The court recalled that, when the goods or services covered by one of the marks in dispute are included in the larger designation covered by the other mark, the relevant public is defined by reference to the more specific wording. In this case, since the mark on which the opposition was based was a French mark, the territory in respect of which the likelihood of confusion had to be assessed was the French territory.

The Board of Appeal had held that, in relation to the services covered in Class 44, the relevant public consisted of both the average consumers and professionals. The court noted that, while it was true that the services covered by the marks appeared to involve mainly professionals, the fact nonetheless remained that those services are provided to consumers by opticians. It recalled that the consumers and the final users of the goods or services are not necessarily those who concluded the sales contract with the producer. In addition, the court noted that the use of the term ‘in particular’ in the application for registration indicated that the services referred to were merely examples of services in that category, and that the protection was not restricted to the specified services. The court thus confirmed that the relevant public was composed of the average consumers and of professionals. 

Regarding the global assessment of the likelihood of confusion, the court stated that it must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

The assessment of the similarity between two marks means more than taking one component of a composite mark and comparing it with another mark. The comparison must be made by examining each of the marks at issue as a whole - which does not mean, however, that the overall impression conveyed by a compound mark could not, in certain circumstances, be dominated by one or more of its components. If all of the other components of the mark are negligible, it is only then that the assessment of the similarity can be carried out solely on the basis of the dominant element. The fact that a mark consists of part of an earlier mark to which another word has been added is an indication that the two trademarks are similar.

Regarding the comparison of the signs, the court noted that both marks contained the element ‘visual’, which rendered them visually similar. The presence of the ‘map’ element in the mark applied for was insufficient to exclude all visual similarity between the marks.

The court also confirmed that the marks were phonetically similar with regard to the shared element ‘visual’. The presence of the ‘map’ element in the mark applied for could not change the overall impression of that mark in order to exclude all similarity between the two marks.

With regard to the conceptual similarity, the Board of Appeal had stated that the fact that the two marks shared the term ‘visual’ (which could be perceived by the average French consumer as being a variant of the French word ‘visuel’) could lead to a close conceptual similarity between the signs. The presence of the additional element ‘map’, which is meaningless for the average French consumer, was not such as to reduce such a similarity. The court agreed, adding that the fact that the French public may recognise in the word ‘visual’ the English equivalent to the French word ‘visuel’ was decisive. By contrast, the English term ‘map’ will not be understood as being the English equivalent of the French words 'reproduction' or 'plan'. Therefore, there was no conceptual difference between the signs.

Finally, the court turned to the global assessment of the likelihood of confusion, which implies some interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services concerned - a lower degree of similarity between the goods or services may be offset by a higher degree of similarity between the marks, and vice versa.

In this case, the services at issue were identical. Given the identity of the services and the overall similarity of the marks, the court held that it was highly likely that, when the relevant public considered those services designated by the mark applied for, or when oral reference was made to those services by using the mark, it may attribute the same commercial origin to the services at issue. Accordingly, even if the relevant public was capable of perceiving certain visual and phonetic differences between the signs, those differences were not such as to remove the risk that a link will be established between the marks concerned.

The court thus agreed that there was a likelihood of confusion between the marks. This conclusion was not called into question by Indo Internacional's argument that the earlier mark VISUAL had a very weak distinctive character - although the distinctive character of the earlier mark must be taken into account for the purpose of assessing the likelihood of confusion, it is only one factor among others. Otherwise, it would be possible to register a mark, one of the elements of which was identical with, or similar to, those of an earlier mark with a weak distinctive character, even where the other elements of that mark were less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs reflected a variation in the nature of the goods or stemmed from marketing considerations, and not that it denoted goods from different traders.

Even assuming that the term ‘visual’ could be regarded as descriptive of the services concerned and that, consequently, the earlier mark could be regarded as having a weak distinctive character, the identical nature of the services covered by the marks at issue and the degree of similarity between those marks, considered cumulatively, proved to be sufficiently high in order to justify the conclusion that there was a likelihood of confusion.

The action was thus dismissed.

Richard Milchior, Granrut Avocats, Paris

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