ECJ considers test for assessing likelihood of confusion with family of marks

European Union

On October 15 2015 the Court of Justice of the European Union (ECJ) issued its judgment in Debonair Trading Internacional Lda v Office for Harmonisation in the Internal Market (OHIM) (Case C-270/14 P), concerning the test for assessing a likelihood of confusion in the context of a family of marks.

This dispute arose from an application filed on April 3 2009 by Ibercosmetica SA de CV for registration of the word mark SÔ: UNIC as a Community trademark (CTM) for goods in Class 3 of the Nice Classification.

Debonair Trading Internacional Lda filed a notice of opposition on the basis of a likelihood of confusion with its prior CTMs and UK trademarks all containing the word element 'so…?' - for example, the word marks SO…?, SO…? ONE and SO…? CHIC, all registered for identical goods in Class 3. The opposition was also based on earlier non-registered trademarks featuring the same word element and covering identical or similar goods.

The Opposition Division of OHIM rejected the opposition. This was appealed by Debonair to the Board of Appeal, which dismissed the appeal on the basis that there was no likelihood of confusion between the mark applied for and Debonair’s earlier registered trademarks, as they were conceptually dissimilar and could not be regarded as being part of the same family of marks. It also found that opposition on the basis of identical or similar unregistered rights was inadmissible.

Debonair appealed against this decision to the General Court, which annulled the Board of Appeal’s decision to the extent that the opposition had been rejected as inadmissible in relation to unregistered earlier trademarks. The General Court however dismissed the remainder of Debonair’s appeal as it contended that the mark applied for and the earlier trademarks were not part of the same family of marks. It found that the element 'SÔ' of the application did not coincide with the word element 'SO….?”'of the earlier marks, and that there were no other elements or factors connecting the mark applied for and Debonair’s trademarks. As a result, the General Court confirmed the findings of the Board of Appeal.

Debonair appealed to the ECJ on the grounds that the General Court had erred in law by not taking the correct criteria into account in establishing whether there was a likelihood of confusion between a family of marks and a later trademark. In particular, it alleged that the General Court had incorrectly equated the test for the existence of a family of marks with the test for likelihood of confusion between the mark applied for and an existing family of marks and had omitted to carry out a global assessment of the likelihood of confusion. OHIM submitted that the ground for appeal was a factual matter and therefore not an admissible ground of appeal before OHIM.

The ECJ held that as far as a family of marks is concerned, there will be a likelihood of confusion if the consumer is mistaken as to the provenance of the goods or services protected by the mark applied for, such that it appears that the mark applied for is part of the earlier family of marks. A likelihood of confusion will exist where there are a number of marks constituting a series and where the mark applied for displays key characteristics that would associate it with the series. The likelihood of confusion must be assessed globally and it is necessary to take into account all the circumstances of the case.

The ECJ found that the General Court had properly applied this test and was correct in determining that that the key element 'SO….?', which was common to the earlier marks, did not coincide with the element 'SÔ' in the application mark and that, considering the overall conceptual and structural differences between the marks, the lower instances were justified in finding that the mark applied for, when viewed as a whole, did not correspond to the pattern of the family of marks. Although the ECJ found that the General Court had not considered whether the goods protected were identical or not, this changed nothing as the General Court had already identified that there were sufficient differences between the marks to preclude any confusion from arising. As a result, the appeal was dismissed.

Alistair Payne, Matheson, Dublin

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