General Court finds likelihood of confusion between word mark and composite mark
In Premiere Polish Co Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-361/12, December 6 2013), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM (Case R 851/2011 4, June 8 2012) in opposition proceedings between Donau Kanol GmbH & Co KG and Premiere Polish Co Ltd regarding the registration of the mark ECOFORCE.
Premiere Polish applied for the registration of the word mark ECOFORCE for “preparations and substances all for laundry use; cleaning, polishing, scouring, descaling and abrasive preparations; soaps; turpentine substitute; paint or polish stripping preparations and substances; water closet colouring materials; antistatic preparations and substances; and rinse additives” in Class 3 of the Nice Classification.
Donau Kanol filed an opposition based on an earlier figurative Community trademark (pictured below) including the word elements ‘eco’ and ‘forte’ written in yellow on a green background, registered for “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices” goods in Class 3.
The opposition was upheld by the Opposition Division of OHIM. The Fourth Board of Appeal of OHIM dismissed Premiere Polish's appeal. The board found that there was a likelihood of confusion between the marks at issue based on:
- the identity of the goods covered by the two marks;
- the low degree of visual similarity between the marks - the word elements ‘eco’ and ‘forte’ were located in a central position in the earlier mark, while the word ‘forte’ did not dominate over the word ‘eco’ and the figurative elements were only of secondary importance, having an essentially decorative nature in the perception of the relevant public;
- the high degree of phonetic similarity - seven of the eight letters in the mark applied for were identical to those contained in the earlier mark and also were positioned according to the same sequence, the only difference being the final syllables of the two signs, which, due to the common vowel 'e', were also capable of showing phonetic similarities; and
- the conceptual similarity - consumers in certain member states of the European Union, in particular English and French-speaking consumers, would recognise the elements ‘eco’, ‘forte’ and ‘force’.
As regards the remaining consumers, the conceptual comparison of the two signs was considered to be neutral. The Board of Appeal also considered that the visual differences were insufficient to allow consumers with an average degree of attentiveness to distinguish between the two marks.
Premiere Polish appealed. The General Court dismissed the action in its entirety and upheld the reasoning of the Fourth Board of Appeal of OHIM, finding that none of the arguments put forward by Premiere Polish in support of its plea was well founded.
Premiere Polish argued that:
- there was no visual similarity between the two signs or, at most, a very low degree of visual similarity;
- there was no phonetic similarity or, at most, a low degree of phonetic similarity;
- the earlier mark had a clear conceptual meaning, which derived from its figurative elements, unlike the mark applied for, which was devoid of any such meaning; and
- there was no likelihood of confusion.
The court found that the average consumer belonging to the relevant public would perceive the word elements of the earlier mark as consisting of the words ‘eco’ and ‘forte’, read in that order, as there was no notable difference in size between the two elements which would be capable of conferring a clearly dominant character on one of them.
Premiere Polish also argued that the word ‘eco’ had a weak distinctive character and, consequently, consumers recalling the earlier figurative mark either omitted this term or placed it after the word ‘forte’; the element ‘eco’ was thus negligible in the relevant public’s perception of the earlier figurative mark. The court found that Premiere Polish had not brought any evidence in support of this claim. Moreover, as found by the Board of Appeal, the court considered that the marks at issue were highly similar phonetically, in view of the fact that not only the letters, but also the syllables of the word elements of the signs, had the same sequence.
Turning to the visual comparison of the signs, the court noted that, according to well-established case law, in the case of a mark consisting of both word and figurative elements, the word elements must generally be regarded as more distinctive than the figurative elements, or even as dominant, since the relevant public will keep in mind the word elements to identify the mark concerned, the figurative elements being perceived more as decorative elements.
In this case, the court found that that the figurative element of the earlier mark was not likely to make an impression on consumers and be remembered by them, taking into account the limited number of colours used (yellow and green), the banal nature of the arrangement of the shapes around the word element and their lack of any specific distinctive character. In addition, the court underlined that it had not been established that the figurative element of the earlier mark had its own semantic content and that it was a configuration which was elaborate enough to be capable of having a substantial influence on the overall impression created by the earlier mark.
With regard to the conceptual comparison of the signs, the court found that the elements ‘forte’ and ‘force’ had similar meanings and were thus conceptually similar for part of the relevant public. Further, the figurative characteristics of the earlier mark were not capable of conferring a different conceptual meaning on that mark and, therefore, of excluding all conceptual similarity with the mark applied for.
Considering the likelihood of confusion, the court, citing previous case law, pointed out that its assessment on the part of the relevant public depends on various factors and must be appreciated globally, taking into account all factors relevant to the circumstances of the case. In addition, the assessment of the likelihood of confusion implies some interdependence between the relevant factors, so that a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa.
In this case, the court found that there was a likelihood of confusion between the marks at issue considering:
- the identity of the goods at issue, and the fact that the goods covered by both signs were intended for the same category of consumers;
- the average distinctiveness of the earlier mark;
- the low degree of visual similarity between the marks;
- the high degree of phonetic similarity; and
- the conceptual similarity in relation to the public in some member states, in particular French or English-speaking countries.
This finding could not be invalidated by Premiere Polish's claim that the Board of Appeal had not examined the usual method of marketing the goods at issue. Although the objective conditions under which the goods are marketed are sometimes taken into account by the departments of OHIM in order to determine the weight to be given to the visual, phonetic and conceptual aspects of the marks at issue during the global assessment of the likelihood of confusion, the Board of Appeal had rightly found that the visual differences between the marks were insufficient to offset the other criteria taken into account in the global assessment of the likelihood of confusion.
Delia Belciu, Nestor Nestor Diculescu Kingston Petersen, Bucharest
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