General Court considers Community equivalent of US 'Morehouse defence'

European Union

In Argo Group International Holdings Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-247/12, May 20 2014), the General Court has upheld the decision of the Second Board of Appeal of OHIM that there was a likelihood of confusion between the figurative marks ARIS and ARISA ASSURANCES S.A.

In 2008 Art Risk Insurance and Information Services Corp filed a Community trademark (CTM) application for the figurative mark ARIS in Class 36 of the Nice Classification for general insurance services and specialist insurance services for fine art. Arisa Assurances SA opposed the application based on its prior CTM registration for the figurative mark ARISA ASSURANCES S.A. 

                               

The opponent relied on Article 8(1)(b) of the Community Trademark Regulation (207/2009) to allege that the ARIS figurative mark was confusingly similar to its registered mark. The Opposition Division upheld the opposition and the Board of Appeal dismissed the appeal brought by Art Risk Insurance, holding that there was a likelihood of confusion between the two marks. During the appeal proceedings, Art Risk Insurance transferred its ARIS application to Argo Group International Holdings Ltd (the applicant).

With regard to the relevant public, the Board of Appeal had found that it consisted of both average consumers of insurance services, who are reasonably well informed, observant and circumspect, and specialised consumers such as art dealers whose level of attention is higher. The perceptions of both general and specialised consumers were relevant because both marks designated “insurance services”, which provide protection for all insurance services regardless of the object insured.

In cases where the perceptions of two different types of consumers are relevant, it is settled law that the group with the lowest attention level must be taken into account. Accordingly, the General Court held that the Board of Appeal, in considering the views of the general public with an “imperfect recollection”, did not err in either its definition of the relevant public or as regards the public that it took into consideration.

With regard to the similarity of the signs, the General Court upheld the Board of Appeal’s determination that the dominant components of the marks at issue were the word elements 'aris' and 'arisa', noting that neither the graphic representation of the marks nor the words 'assurance s.a' undermined the dominant character of these word elements. In particular it noted that the fact that 'aris' and 'arisa' have no conceptual meaning and are not descriptive only served to reinforce their dominant character.

The General Court agreed with the Board of Appeal’s determination that the marks were similar. It rejected the applicant’s argument that the Board of Appeal confined itself to an assessment of the similarity of the dominant element. The General Court found that an assessment of each of the marks’ elements was carried out and the Board of Appeal was correct in attributing a greater weight to the dominant elements.

With regard to the likelihood of confusion, the General Court held that the Board of Appeal was correct to conclude that there was a likelihood of confusion between the marks due to the similarity of the signs and the similarity of the services covered by the marks.

The applicant submitted that the Board of Appeal had not taken account of the co-existence of the opponent’s mark and the applicant’s Community word mark ARIS or its registered US figurative mark. It asked the General Court to apply the US 'Morehouse defence', which provides that a person opposing a trademark cannot be considered to be harmed by that trademark where an identical or substantially similar trademark has already been registered. In rejecting this argument, the General Court emphasised the autonomous nature of the CTM regime and noted that (in accordance with Community case law) the co-existence of earlier marks could reduce the likelihood of confusion. Such possibility can be considered only if the co-existence is based upon the absence of any likelihood of confusion and if the marks are identical. As the applicant’s earlier word mark was not identical to the contested figurative mark, and as the US mark was irrelevant to Community proceedings, the General Court held that the defence could not be invoked in this case.

This judgment is a useful example of the analysis of the global assessment of similarity between two figurative marks with highly similar dominant elements, and provides an overview of the law relating to the relevant public. The most interesting aspect of this judgment is the General Court’s summary of the Community equivalent of the US 'Morehouse defence', which is rarely considered by the General Court. There are very few cases in which such a defence could be run successfully. Demonstrating that co-existence is based on the absence of a likelihood of confusion, while relying on an earlier identical mark, seems a very difficult, if not impossible, task. 

Alistair Payne and Amy Lawless, Matheson, Dublin

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