ECJ: meaning of Arabic words must be taken into account to assess likelihood of confusion

In Loutfi Management Propriété Intellectuelle v AMJ Meatproducts (Case C-147/14), the Court of Justice of the European Union (ECJ) has considered a request for a preliminary ruling from the Brussels Court of Appeal concerning the interpretation of Article 9(1)(b) of the Community Trademark Regulation (207/2009).

Both the plaintiff, Loutfi Management Propriété Intellectuelle, and the defendants, AMJ Meatproducts and Halalsupply (hereafter Halalsupply), market halal meat products.

Loutfi is the owner of the two Community trademarks (CTMs) depicted below, which are registered for, among other things, meat in Class 29 of the Nice Classification. The marks combine the colours red, white and green:

When Halalsupply started commercialising halal sausages under the trademark EL BAINA, depicted below, Loutfi started infringement proceedings.

All trademarks involved in the dispute depicted terms in both Latin and Arabic script; the Latin-script words ('El Benna'/'El Bnina' v 'El Baina') seemed similar to a relatively high degree both phonetically and visually. The national court concluded that the relevant public was composed of Muslim consumers of Arab origin who consume halal food products in the European Union. The court further stated that, in the Arabic language, 'El Benna' means 'taste', 'El Bnina' means 'softness' and 'El Baina' means 'sight'.

The question raised by the court was whether Article 9(1)(b) of the regulation must be interpreted as meaning that, in order to assess the likelihood of confusion by reference to the perception of the relevant public (defined by the court as Muslim consumers of Arab origin who have a basic knowledge of written Arabic), the national court should take into account the meaning and pronunciation of the Arabic words.

The European Union now counts 23 official languages. International trade implies that consumers are also confronted with trademarks in regional languages (eg, Basque, Breton, Catalan, Frisian, Sardinian and Welsh), non-EU languages (eg, Turkish, Arabic, Russian and Chinese) and even non-territorial languages (eg, Romani and Yiddish). In this case, the issue was whether a national court must take into account a non-indigenous language spoken by Arabic immigrant communities.

The ECJ responded that, “in circumstances where the relevant public for the Community mark and for the sign at issue has a basic knowledge of written Arabic, the meaning and pronunciation of those words must be taken into account”.

The issue of the use of non-EU languages at the registration stage, or later in opposition proceedings, is not new. At the registration stage, the national trademark offices and OHIM will in principle accept trademark applications in a foreign language if the meaning of the mark is not known to the average consumer in the EU member state(s) concerned (in this respect, see GARUM (Case T-341/06), which concerned a Latin word). In other words, even trademarks that are descriptive or generic in a foreign language will be registered.

However, in opposition proceedings, the General court has refused to take into account the meaning of words in a foreign language. For example, in opposition proceedings involving the earlier UK mark MOU (meaning 'pork' in Laotian and Thai) and the CTM application for KIAP MOU (meaning 'crispy pork'), the General court took into consideration the consumers in the United Kingdom as a whole, and not the Indochinese or Thai consumers (Oriental Kitchen v OHIM (Case T-286/02)).

In infringement actions, however, the national courts will normally take into consideration all the facts and circumstances of the particular case. For example, an action for infringement of the CTM GAZOZ (Turkish for 'mineral water') against the use of the sign 'gazoz' on mineral water bottles that were distributed in grocery shops specialising in Turkish food was dismissed because such use was held to be descriptive (German Supreme Court, Case IZR 23/02, cited in "Study of the Overall Functioning of the European Trademark System", Max Planck Institute, 2011, No 3.41).

In the case at hand, the question remains of whether the halal meat at issue is only sold to people who understand the Arabic script, or is also sold to a - maybe insignificant - minority of native French or Flemish-speaking people who only take into consideration the Latin wording on the labels. Should the court also take into account a risk of confusion among this native minority, or should this minority not be considered as part of the relevant public when assessing the risk of confusion?

Paul Maeyaert, ALTIUS, Brussels