ECJ refers surname case back to General Court

European Union
In Becker v Harman International Industries Inc (C-51/09 P, June 24 2010), the Court of Justice of the European Union (ECJ) has ruled in favour of Barbara Becker, the former wife of German tennis star Boris Becker, and set aside the decision of the General Court (Case T-212/07). 
In November 2002 Barbara Becker filed an application for the registration of the mark BARBARA BECKER as a Community trademark (CTM) in Class 9 of the Nice Classification. Harman International Industries Inc opposed the application based on its CTMs BECKER and BECKER ONLINE PRO in Class 9. The case focused primarily on the BECKER mark. It appears that Harman has no relation to Boris Becker.
The Opposition Division of OHIM upheld the opposition, holding that there was a likelihood of confusion between the earlier mark BECKER and the mark BARBARA BECKER. On appeal, the First Board of Appeal of OHIM annulled the decision of the Opposition Division, finding that there was no likelihood of confusion. The board found that, despite the visual and phonetic similarities between the signs, they were sufficiently different from a conceptual point of view, since BARBARA BECKER would be perceived as a whole due to Barbara Becker’s celebrity status in Germany, while Becker was a very common surname. 

Harman appealed to the General Court, which annulled the board's decision, concluding that there was a likelihood of confusion between BARBARA BECKER and BECKER. The General Court held that, in some parts of the European Union, and at least in Italy, consumers would attribute greater distinctiveness to the surname Becker than to the first name Barbara. Citing the decision of the ECJ in Medion (Case C-120/04), the General Court held that BECKER would at least retain an independent distinctive role in the composite mark BARBARA BECKER.
Barbara Becker appealed to the ECJ, arguing that the General Court had infringed Article 8(1)(b) of the Community Trademark Regulation (40/94). First, the ECJ reiterated the following principles:
  • There will be a likelihood of confusion if the public might believe that the goods or services at issue come from the same undertaking or from an economically linked undertaking;
  • All relevant factors should be taken into account in assessing the existence of a likelihood of confusion on the part of the public;
  • The global appreciation of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks, should be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components; and
  • The average consumer normally perceives a trademark as a whole and does not proceed to analyze its details.
The ECJ then stated that, in Medion, it had recognised that a component of a composite sign could be relevant, provided that it retained an independent distinctive role within the composite mark. However, the ECJ held that, in a composite mark consisting of a surname and a first name, the surname does not retain an independent distinctive role in every case. According to the ECJ, it was appropriate to take into consideration all the relevant factors - and, in particular, whether the surname at issue was unusual or not. Very common surnames, such as Becker, might not retain an independent distinctive role in a composite mark. 
Moreover, the ECJ held that the General Court had failed to examine the perception of the mark by the relevant public. Where a person seeks to register a mark consisting of a first name and a surname, the combination of which is allegedly well known, the court must examine carefully whether this combination will be perceived as a whole, or whether the surname is the dominant or distinctive element. In this respect, the ECJ agreed with the advocate general, who had condemned the decision of the General Court in his opinion of March 25 2010 (for further details please see "Advocate general strongly criticises General Court's decision on surname"). According to the advocate general, the General Court's decision could give rise to the mistaken belief that any surname may be held to be confusingly similar to a composite mark that includes a first name and the surname in question. The ECJ thus concluded that the General Court had erred in basing its assessment of the conceptual similarity of the marks on general considerations without analyzing all the relevant factors specific to the case, in disregard of the requirement of an overall assessment of the likelihood of confusion.
This dispute - which has now been going on for almost eight years - is far from over, as the ECJ has referred the case back to the General Court. It remains to be seen how the General Court will deal with the following questions:

  • whether Becker is just a common name which has no independent distinctive role in the mark BARBARA BECKER; and
  • whether the mark BARBARA BECKER will be perceived as a whole, in view of the extensive use of this name in Germany.
Finally, some interesting elements of the case have not been reviewed. First, the case is unusual in that Barbara Becker, a well-known celebrity, sought to defend her application for BARBARA BECKER against the less well-known mark BECKER. If the mark BARBARA BECKER proceeds to registration, Barbara Becker should have no difficulty enforcing her mark against later BECKER marks on the grounds that these marks:
  • are confusingly similar to her mark; and
  • seek to exploit her reputation.
Another interesting fact is that Barbara Becker was born as Barbara Feltus, and she became known as an actor and model under that name. She took the name Becker only when she married tennis champion Boris Becker. Further, Barbara Becker remarried in September 2009 and is now known as Barbara Quinze. As the ECJ stated that the celebrity status of Barbara Becker should be taken into account, these changes of name could have been relevant.
Third, it would be interesting to see whether an opposition filed by a company controlled by, or affiliated to, Boris Becker would have had a different outcome.
Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg

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