Enforcing single-letter marks as purely figurative

European Union
  • Oakley opposed mark consisting of a stylised letter ‘O’ for likelihood of confusion and potential unfair advantage
  • EU General Court dismissed the appeal, holding that the appellant had failed to establish the reputation of the earlier mark
  • Case suggests that a stylised single letter has more chance of opposing another single-letter mark if described as a purely graphic device


Protecting single-letter marks has proven so difficult that if sufficiently stylised it may be preferable to enforce such marks as purely figurative. The EU General Court’s recent judgment in Oakley Inc v European Union Intellectual Property Office (EUIPO) (Case T-754/16) would appear to confirm this.

Facts

The case involved an EU trademark application which consisted of two symmetrical letter ‘Cs’ facing each other.

       

The eyewear manufacturer, Oakley, opposed the above application relying on its earlier EU trademark consisting of a stylised letter ‘O’, shown below. The grounds for the opposition were those laid down in EU Trademark Regulation Article 8(1)(b) (likelihood of confusion) and Article 8(5) (potential unfair advantage of or detriment to the distinctive character or reputation of the earlier registration).

The EUIPO Opposition Division rejected Oakley’s opposition in its entirety. The conclusions of the Opposition Division regarding the absence of similarity between the marks at issue were upheld by the Fourth Board of Appeal, which rejected Oakley’s appeal. The board of appeal discarded the existence of a likelihood of confusion based on the following considerations:

  • the conflicting marks presented no visual similarity;
  • an aural comparison between figurative marks containing no verbal elements was irrelevant; and
  • no conceptual similarity between the signs could be established.

The board of appeal held that the absence of similarity between the marks excluded the application of Article 8(1)(b), regardless of the level of distinctive character acquired by the earlier mark as a consequence of its use.

EU General Court decision

The EU General Court’s assessment of the similarity of the signs at issue reached a different conclusion.

The court agreed with the contested decision’s findings as to the absence of a conceptual similarity between the signs and the irrelevance of an aural comparison between the marks. However, it contradicted the board of appeal in finding that the conflicting marks, described as “rectangular figures presenting rounded angles and longitudinal edges” with an overall “elliptical appearance”, were similar “to a certain degree” from a visual standpoint.

Taking into consideration that the comparison between the marks should be made through the eyes of the relevant public, who would not display a particularly high degree of attention and whose recollection is imperfect, the court concluded that the signs were “fairly comparable, considering that they only differ in their respective maximum height, which does not affect the similarity of their general appearance”.

The court confirmed the low inherent distinctiveness of the simple figurative sign which, like the earlier registration, was composed of one or more basic geometrical shapes, such as “triangles or circles, ellipses or crescents”. However, it criticised the board of appeal for only analysing the evidence submitted by Oakley for the purposes of establishing the earlier mark’s reputation, but failing to examine whether such evidence showed the earlier mark possessed an enhanced level of distinctiveness which would increase a likelihood of confusion under Article 8(1)(b).

Surprisingly, however, the court did not analyse whether, in view of the relevant evidence, Oakley was entitled to rely on the enhanced distinctiveness of the earlier mark, which would appear to be a relevant issue, taking into account that a mark with an inherently low degree of distinctiveness should confer an equally low level of protection.

The court concluded that the errors of assessment of the similarity between the signs at issue “may have influenced [the board of appeal’s] assessment of a likelihood of confusion”, and therefore annulled the contested decision insofar as it confirmed that Article 8(1)(b) did not apply. The court dismissed the appeal as to the remainder, confirming that the appellant had failed to establish that the earlier mark had a reputation within the meaning of Article 8(5).

Although it is positive that marks which benefit from a high degree of recognition also benefit from enhanced protection regarding confusingly similar signs, it is unclear in the present case whether the earlier mark was entitled to such an enhanced degree of protection. 

In addition, the idea that a mark consisting of a reasonably stylised single letter has a better chance of successfully opposing the registration and use of another single-letter mark (or a combination of two letters) if it is described as a purely graphic device, is somewhat disturbing.

There will be cases where a particular letter will not be immediately recognised as such by the relevant public. This may have been such a case and the question remains as to   whether the court’s approach to the conceptual and aural comparison of the signs was correct.

Apparently, owning an exclusive right in an “elongated rectangular elliptic-like black figure with rounded edges containing a square white element within equally rounded edges, the sides of which are wider than its upper and lower parts” beats owning a stylised letter ‘O’.

Celia Sueiras Villalobos, J&A Garrigues SLP, Madrid

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