ECJ: marks containing common word 'seven' have certain degree of similarity
In Seven for all mankind LLC v Seven SpA (Case C-655/11 P, February 21 2013), the Court of Justice of the European Union (ECJ) has put an end to the dispute between the applicant for the Community trademark (CTM) SEVEN FOR ALL MANKIND (word mark) in Classes 14 and 18 of the Nice Classification and Seven SpA, the owner of the following earlier SEVEN trademarks:
- CTM No 591206 in Classes 16, 18 and 25:
- CTM No 3489234 in Classes 16, 18, 25:
- International Registration No 731954 in Classes 3, 9, 12, 14, 15, 16, 18, 20, 22, 25 and 28:
The opposition was based on Article 8(1)(a) and (b) and Article 8(5) of the Community Trademark Regulation (40/94), now Article 8(1)(a) and (b) and Article 8(5) of the Community Trademark Regulation (207/2009). The Opposition Division upheld the opposition in part as regards “rucksacks” in Class 18, finding that the earlier trademarks had acquired an average distinctive character in relation to those goods.
On October 20 2008 Seven SpA filed a notice of appeal pursuant to Articles 58 to 64 of Regulation 209/2009, and submitted further evidence proving the reputation of the earlier trademarks in the European Union.
On January 28 2010 the Second Board of Appeal of OHIM issued a decision finding that there was no likelihood of confusion between the marks because they “were not similar overall”. In addition, the board stated that, taking into account the lack of confusing similarity between the signs, it was not neccessary to establish proof of reputation under Article 8(5).
The General Court (Sixth Chamber) annulled the decision of the Second Board of Appeal and dismissed the action as to the remainder. Seven for all mankind appealed
The ECJ first held that the General Court had committed a breach of procedure by not examining the arguments as to the existence of numerous trademarks registered in the European Union containing the word 'seven' or the number 7. However, the ECJ found that this would not have had any bearing on the General Court’s finding. Moreover, it was found that “the mere existence, even in high number, of marks which had that characteristic is not sufficient to establish the weak distinctive character of those trademarks” (Paragraph 48). The ground of appeal alleging a procedural irregularity was thus rejected, as the General Court would not have been able to come to a different conclusion.
As far as the alleged infringement of Article 8(1)(b) of the regulation was concerned, the ECJ noted that “the perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion” (see, eg, Medion (Case C-120/04), Paragraph 28) (Paragraph 71 of the judgment). Therefore, the General Court had correctly evaluated that it is only if all the other components of the marks are negligible that the assessment of the similarity can be carried out solely on the basis of dominant elements. The presence of the element 'seven' in both marks created a certain overall similarity between them.
The ECJ further noted that the General Court had not merely made a general finding which gave an excessive importance to an analysis of the marks based on the elements with which they began, but had examined the marks as a whole, even if it was found that the additional words “for all mankind” were not sufficient to exclude a conceptual similarity between the marks. Therefore, “the overall perception of the word 'seven' overrides the other elements of the mark for which registration is sought” (Paragraph 88). In addition, the mere recognition of the “remarkable” and “philosophical” aspects of the expression “for all mankind” in the later mark could not preclude the conclusion that the marks were similar overall.
Highlighting the General Court’s finding that numerals may be registered as CTMs if they meet the requirement of Article 7 of the regulation, the ECJ found no inconsistency in the General Court’s decision. The appeal was thus dismissed.
Vincenzo Melilli, Bugnion SpA, Milan
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