General Court: no likelihood of confusion between figurative mark and word mark consisting of same letters

The General Court has issued its judgment in Hong Kong Group Oy v Office for Harmonisation in the Internal Market (OHIM) (Case T-718/14, November 30 2015), with Hong Kong Group Oy as applicant, OHIM as defendant and WE Brand Sàrl as the other party to the proceedings before the Board of Appeal of OHIM.

The court reiterated that, with regard to Community trademarks:

“the assessment of the similarity between two marks means more than taking just one component of a composite trademark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trademark may not, in certain circumstances, be dominated by one or more of its components... It is only if all the other components of the mark are negligible."

The dispute arose from an application for registration, filed on March 28 2012 by Hong Kong Group under the Community Trademark Regulation (207/2009), for the following figurative sign:

The application covered, among other things, “clothing, footwear, headgear” in Class 25 and “retail sale services, reseller services, wholesale services and sales services provided by means of electronic data media, featuring fishing tackle, clothing, footwear and headgear; providing of product information relating to consumer goods by means of electronic data media” in Class 35 of the Nice Classification.

On August 14 2012 We Brand filed a notice of opposition in respect of the abovementioned goods and services, with the exception of the services in Class 35 relating to “sales services provided by means of electronic data media, featuring fishing tackle” and services for the provision “of product information relating to consumer goods by means of electronic data media”. The opposition was filed pursuant to Article 41 of the regulation and was based on the earlier Community word mark WE, registered under No 7208571 on June 22 2000 for, among other things, goods and services in Classes 25 and 35 and corresponding to the following description: "clothing, footwear, headgear” (Class 25) and “business mediation in the purchase and sale, including within the framework of retailing, of clothing, footwear, headgear, the aforesaid services also offered via electronic channels, including the Internet” (Class 35).

The opposition, which was based on Article 8(1)(b) (likelihood of confusion between the signs at issue) of the regulation, was upheld in its entirety on September 30 2013 by the Opposition Division.

On November 22 2013 the applicant filed an appeal with OHIM under Articles 58 to 64 of the regulation.

On August 4 2014 the Second Board of Appeal of OHIM dismissed the appeal, concluding that there was a likelihood of confusion between the signs within the meaning of Article 8(1)(b) of the regulation. In particular, the board found that the goods in Class 25 and the services in Class 35 - limited to those to which the opposition related - covered by the mark applied for, and the goods in Class 25 and the services in Class 35 covered by the earlier mark, were identical and similar, respectively. Further, due to the visual and phonetic similarity of the signs at issue, it was possible that, for a part of the Spanish-speaking public, they were also conceptually similar.

Hong Kong Group appealed to the General Court, alleging infringement of Article 8(1)(b) and asking the court, among the other things, to:

• annul both the decision of the Second Board of Appeal of OHIM and the decision of the Opposition Division; and
• uphold its application for registration.

The applicant based the appeal before the General Court on the following grounds of appeal:

1. the Board of Appeal had erred in concluding that there was a likelihood of confusion;
2. the board had erred in concluding that the signs were similar; and
3. the Board had erred in concluding that the services in Class 35 covered by the mark applied for and the services in Class 35 covered by the earlier mark were similar.

With regard to the first ground, the applicant claimed that the Board of Appeal had misinterpreted Article 8(1)(b) of the regulation. Article 8(1)(b) provides that, upon opposition by the proprietor of an earlier trademark, the trademark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected.

The court held as follows:

“For the purposes of applying Article 8(1)(b) of Regulation 207/2009, a likelihood of confusion presupposes both that the two marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative.

(…) [I]n the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect.

(…) [w]here the protection of the earlier trademark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, in order for registration of a Community mark to be refused, it suffices that a relative ground for refusal, within the meaning of Article 8(1)(b) of Regulation 207/2009, exists in part of the European Union.”

The court noted that the level of attention of the relevant public in the present case was neither particularly low nor particularly high, noting that those findings had not been called into question by the parties.

The applicant further argued that the Board of Appeal was wrong in finding that the mark applied for was visually, phonetically and conceptually similar to the earlier trademark.

In particular, the applicant stated that the Board of appeal was wrong in finding that the dominant element of the mark applied for was made up of the elements ‘w’ and ‘e’, since the dominant element consisted of the figurative element consisting of a stylised fish depicting a weather vane, which attracted attention because of its size and original appearance. Thus, the signs at issue were visually different.

As far as the phonetical similarity was concerned, the applicant stated that the signs at issue were phonetically different since the consumer would perceive the earlier mark as a personal pronoun, while the elements ‘w’ and ‘e’ of the mark applied for formed neither a personal pronoun nor any other word.

Finally, the applicant stated that the signs at issue differed conceptually since the earlier mark referred to the English personal pronoun of the first person plural, while the mark applied for depicted a weather vane and, in that context, the letters ‘w’ and ‘e’ referred to the cardinal points ‘west’ and ‘east’.

The General Court held that:

• Even if the verbal elements of a trademarks are, in principle, more distinctive than its figurative elements, the fact that the figurative element visually dominated the overall impression made by the mark applied for weakened yet further the visual similarity of the signs at issue.
• The letters ‘w’ and ‘e’ of the mark applied for will not be perceived by the relevant public as composing a word, but as two individual letters, separated by the axis of the weather vane. Moreover, “the fact that (i) the mark applied for is pronounced as two letters, while the earlier mark is made up of a single verbal element, and (ii) the first letters of the signs are pronounced differently means that the signs do not create the same impression in the mind of the relevant public”.
• The conceptual comparison had to take into consideration the concept to which the figurative element of the mark applied for refers. In any event, the public of reference would not perceive the verbal elements of the mark applied for as constituting a word, as would be the case for the earlier mark, which meant that the signs are conceptually different.

The General Court thus upheld the applicant’s plea, considering that the signs at issue were dissimilar overall.

The applicant further contested the conclusion reached by both the Opposition Division and the Board of Appeal as to the similarity of the goods and services covered by the signs at issue.

The General Court disagreed with the decision of the Board of Appeal, concluding that since the signs at issue were not similar, it was therefore not necessary to examine the similarity of the goods and services at issue.

In light of the above, the General Court annulled the decision of the Second Board of Appeal and rejected the opposition, ordering OHIM and WE Brand to bear their own costs and to pay those incurred by Hong Kong Group, including those necessarily incurred by Hong Kong Group for the purposes of the proceedings before the Board of Appeal of OHIM.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan