Even marks with very low level of distinctiveness may prevail against later marks
In BSH Bosch und Siemens Hausgeräte GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-123/14), the General Court has annulled a decision of the Fourth Board of Appeal of OHIM in a case involving an application for AQUAPERFECT.
This case concerned an application by Arçelik AS to register the sign AQUAPERFECT as a Community trademark (CTM) in respect of a range of goods in Class 7 of the Nice Classification, including dishwashers and washing machines. The application was opposed by BSH Bosch und Siemens Hausgeräte GmbH on the basis of its earlier CTM registration for WATERPERFECT, covering identical and similar goods.
Bosch’s opposition was successful at first instance, but the Board of Appeal reversed the decision. As outlined by the court:
“[the board] essentially considered that, even though the goods in question were partly similar and partly identical, there was no likelihood of confusion between the signs at issue, owing to the low distinctive character of the earlier mark, the fact that the only element the signs had in common was the weakly distinctive part of the earlier mark, namely the laudatory element ‘perfect’, as well as the low degree of visual and phonetic similarity of the signs”.
Bosch appealed to the General Court.
The court first considered the Board of Appeal’s assessment of the relevant consumer. It agreed that the correct public was the end consumer in general, across all member states. However, it disagreed with the board’s view that the consumer would be paying a higher than average degree of attention, due to the nature of the goods in question. While that was true for some of the goods, others were daily consumer goods. As such, the consumer paying only a normal degree of attention must also be factored into the likelihood of confusion assessment.
The court concurred with the finding that the goods covered by the mark applied for and those covered by the earlier mark were all identical or similar. It then went on to compare the marks themselves.
Firstly, it found that, contrary to the board’s finding, the signs were visually similar to an average degree. While the consumer does generally pay greater attention to the beginning of a mark than to the end, in this case the signs were of near-equivalent length and shared the common, eight-letter element, ‘perfect’. The similar elements prevailed, overall, over the dissimilar ones.
Secondly, following largely the same reasoning as in respect of visual similarity, the court again found that the similarities prevailed and that the signs were, overall, aurally similar to an average degree.
Thirdly, while neither sign may have a clear conceptual meaning, the court found that both would be perceived, by a large part of the relevant public, as identifying the concepts of water and quality. It considered, but dismissed, arguments that the different linguistic roots of 'aqua' and 'water' would prevent the consumer from making a conceptual comparison. The signs did have some conceptual similarity.
Overall, the respective signs were similar to an average degree.
In moving on to assess the likelihood of confusion, the court did not dismiss the argument of both OHIM and Arçelik that WATERPERFECT was of weak distinctive character - the argument essentially being that the mark was registered for goods which all concerned water and contained an entirely laudatory element, ‘perfect’. However, the court found that, without it even being necessary to rule on that point, the distinctiveness of the earlier mark was anyway only one factor in the overall assessment. The similarity of the marks, the similarity and identity of the goods and the level of consumer attention meant that there existed a likelihood of confusion. The Board of Appeal decision was thus annulled.
This case is a demonstration that even marks with a seemingly very low level of distinctive character can prevail against later filed marks and cannot be lightly dismissed as unenforceable. An overall assessment of the likelihood of confusion, taking into account all relevant factors, must still be carried out.
Chris Morris, Burges Salmon LLP, Bristol
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