Figurative elements prevail over word elements in GALLO Case
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In Victor Guedes - Industria e Comercio SA v Office for Harmonization in the Internal Market (OHIM) (Case T-151/08, June 11 2009), the Court of First Instance (CFI) has held that the figurative trademarks GALLECS and GALLO were dissimilar.
Consorci de l’Espai Rural de Gallecs, which is established in Spain, sought to register as a Community trademark a figurative sign consisting of the word 'Gallecs' (a rural area on the outskirts of Barcelona) and the image of a church inside a circle. The application covered goods and services in Classes 29, 31 and 35 of the Nice Classification.
Victor Guedes - Industria e Comercio SA opposed the application on the basis of several earlier figurative Portuguese and Community trademarks containing the word 'gallo' for goods in Class 29. The marks also contained the word elements 'azeite novo' or 'Victor Guedes' and the image of a cockerel, which was larger than the word elements.
Victor Guedes claimed that the dominant elements of the marks were the words 'Gallecs' and 'gallo', which shared the group of letters 'gall'.
The Opposition Division of OHIM rejected the opposition, finding that there was no likelihood of confusion between the marks because they conveyed a different overall impression. The Board of Appeal of OHIM affirmed the Opposition Division's decision. Victor Guedes appealed to the CFI, which dismissed the action.
According to the CFI, the figurative element of the trademark applied for "occupied more than half of the circle and the word element slightly less than half". Since the figurative element was larger than the word element, the CFI rejected Victor Guedes's argument that the main visual element of the GALLECS mark was its word element. Moreover, because the image of the cockerel was larger than the word 'gallo' in the earlier marks, it could not be said that the average consumer would not keep that image in mind.
From a phonetic point of view, the court held that the difference in pronunciation resulting from the endings of the words 'gallo' and 'Gallecs' was significant because of the low-pitched sound of the letter 'O' and the harsh sound of the group of letters 'ecs'. The CFI further held that the figurative elements of the marks enabled the relevant public to distinguish between the marks. It also rejected Victor Guedes's argument that the marks shared a common religious aspect.
The decision of the CFI must be considered in light of the following cases:
- LIMONCHELO (Case C-334/05 P), in which the European Court of Justice (ECJ) held that the word elements in figurative marks cannot be ignored simply because the graphic element is dominant (for further details please see "Complex mark confusion assessment clarified by ECJ"); and
- QUICK (Case C-193/06 P), in which the ECJ highlighted the importance of the visual comparison in assessing the overall impression produced by complex marks (for further details please see "No quick exit for QUICKY").
GALLO is one of the first decisions to state expressly that the figurative element of the mark prevailed over the word element. It also shows that the visual comparison should be given more weight in the assessment of the likelihood of confusion between complex marks. This new approach should have an impact on both opposition and trademark search strategies.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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