General Court: marks must be compared in their entirety - including colours

European Union
  • The General Court annulled a decision of the Fifth Board of Appeal on the grounds that confusing marks must be compared in their entirety
  • The board had found the marks dissimilar as it focused on the dominant word elements only
  • The court emphasised that likelihood of confusion must be based on the sign’s overall impression and stressed that colours should be taken into account

In Sumol + Compal Marcas SA v EUIPO (Case T-656/17), the General Court annulled a decision of the Fifth Board of Appeal of the EUIPO on the grounds that potentially confusing marks must be compared in their entirety, which includes a comparison of colours.

On 16 February 2015 the intervener, Ludwig Manfred Jacob, filed an application to register Dr Jacob’s essentials with the EUIPO pursuant to the EU Trademark Regulation (207/2009).

The application was sought for products in Classes 5, 29, 30 and 32 of the Nice Classification and published on 24 March 2015.

The applicant, Sumol + Compal Marcas, filed a notice of opposition on 24 June 2015 under Article 41 (now Article 46 of Regulation 2017/1001) in conjunction with Article 8(1)(b) on the grounds of likelihood of confusion based on earlier marks including the word mark COMPAL ESSENCIAL and figurative signs containing ‘essential’ or ‘essencial’ for products in Classes 5, 29 and 32.

The opposition was rejected in its entirety by the Opposition Division on 12 September 2016, and Sumol’s appeal was dismissed by the Fifth Board of Appeal on 11 July 2017 on the ground that there was no likelihood of confusion between the trademarks within the meaning of Article 8(1)(b). The board found that the words ‘essential’ or ‘essencial’ in the earlier mark and the element ‘essentials’ of the mark were descriptive and laudatory terms. Accordingly, those elements had inherently weak distinctive character. These similarities were insufficient to counteract the differences linked to the mark’s other elements. Hence, the Board of Appeal concluded that there was no likelihood of confusion in spite of the fact that the marks covered identical or highly similar goods.

On 25 September 2017 Sumol brought the decision before the General Court, claiming that the Board of Appeal had failed to take into account:

  • some of their earlier marks;
  • a high degree of visual similarity between the marks at issue, especially with regard to colour; and
  • the rule of interdependence between the goods and services offered and the similarity of the marks.

The General Court stated that likelihood of confusion in accordance with Article 8(1)(b) presupposes that the marks as well as the goods or services which they cover are identical or similar. Those conditions are cumulative. Further, the global assessment of the likelihood of confusion must, with regard to the visual, phonetic or conceptual similarity of the signs, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. Therefore, colours are also constituent elements when assessing likelihood of confusion.

The General Court then stated that while the Board of Appeal had compared the word and graphic elements of the respective marks, neither the Opposition Division nor the board had taken into account the colours of the marks. Therefore, the board had erred in failing to consider all the relevant elements and had not compared the marks at issue in their entirety. The court stressed that the colours were not – as argued by EUIPO – superfluous when comparing marks, and that colours should also be taken into account despite the dominance of other elements.

Against this background, the General Court annulled the Board of Appeal’s decision without assessing whether there existed a likelihood of confusion between the marks or whether the board had failed to regard the rule of interdependence. Instead it based the decision entirely on the fact that the board had not compared the marks in their entirety.

The decision showcases the importance of taking into account all the relevant elements when assessing the marks at hand and that colours should not be overlooked despite their other similarities or dissimilarities. However, it does not give any guidance on the emphasis of similarities of colours.

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