General Court: 'united' not part of elementary English vocabulary

In Junited Autoglas Deutschland GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-297/13, October 16 2014), the Fifth Chamber of the General Court has confirmed the finding of the Second Board of Appeal of OHIM that there was a likelihood of confusion between the word mark UNITED AUTOGLAS and the earlier Polish national figurative mark AUTOGLASS for windshield, windscreens and automobile glazing services in Classes 12 and 37 of the Nice Classification from the perspective of the general public in Poland.

In June 2007 German-based company Junited Autoglas filed an application for the registration of the word sign UNITED AUTOGLAS as a Community trademark for goods and services in Classes 12 and 37, among others, including “vehicles; parts for land vehicles, namely windscreens, glass for car windows; automobile glazing services”.

The Swiss branch of Belron Hungary Kft filed an opposition on the basis of the national Polish figurative mark AUTOGLASS, which designates identical and highly similar goods in Classes 12, 21 and 37.

The Opposition Division of OHIM upheld the opposition with regard to the goods and services in Classes 12 and 37 in January 2012. The Board of Appeal dismissed Junited Autoglas’ appeal, finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of the Community Trademark Regulation (207/2009), based mainly on the following reasoning:

• The relevant public was the general public in Poland with a high level of attention for some of the relevant products which are expensive and infrequently purchased (eg, vehicles);

• The relevant conflicting goods and services were similar or identical; and

• The signs were visually similar to a medium, or at least, low degree, and phonetically and conceptual similar to some degree.

In its action, Junited Autoglas raised a single plea in law, alleging infringement of Article 8(1)(b) of the regulation. Without an oral procedure, the General Court rejected Junited Autoglas’ plea as being unfounded and dismissed the action in its entirety. The key aspects of the court’s decision are as follows:

• There was no dispute between the parties that the marks at issue were directed mainly at the general public in Poland and that the goods and services in conflict were similar or identical.

• Concerning the comparison of the signs, the court dismissed Junited Autoglas' argument that the relevant public would perceive the term 'Autoglas(s)' in the two marks as descriptive and as designating glass for automobiles and that, therefore, it would pay more attention to the first element of the mark applied for (ie, the term 'united'). The term 'Autoglas(s)' exists in German and English and designates glass for automobiles in those two languages. However, Junited Autoglas had not provided any evidence that the relevant average Polish consumer has a relatively high level of comprehension of either German or English. The court noted that the Polish term for glass - 'szkło’ - was clearly dissimilar and that the term 'glass' could not be considered to form part of the basic English vocabulary which consumers in the European Union might know. Consequently, in the light of the lack of meaning of the word 'glass' for the part of the relevant public in Poland which does not have a certain level of knowledge of English, the term 'Autoglas' as a whole had no meaning and, therefore, was of medium distinctive character.

• The court also disagreed with Junited Autoglas’ assertion that the term 'united' held a dominant position in the CTM application. According to the court, the English word 'united' is also not part of the elementary English vocabulary; therefore, even though the average Polish consumer might recognise the word 'united' (eg, from the name “the United States of America”), there was nothing to suggest that the average Polish consumer would also understand the meaning of 'united'. All in all, neither of the two elements of the mark UNITED AUTOGLAS could be considered to be dominant.

• Unlike the Board of Appeal, which had considered that the marks were visually similar to a medium degree, the court found only a low degree of visual similarity between the marks. In particular, the court held that the figurative element of the earlier mark had some impact on its overall visual impression, taking account of its position, the space it occupies and its form, and due to the common word element 'Autoglas(s)' being longer than the term 'united'.

• The element 'united' in the CTM application was not sufficient to prevent a likelihood of confusion. There was a risk that a consumer, even one who is highly attentive, may think that the mark applied for is a variant of the earlier mark.

The decision of the General Court does not come as a surprise when it comes to the assessment of composite marks and the perception that average consumers in most EU member states have a moderate understanding of English. However, one might question this basic presumption, and the assessment of the understanding of the term 'united' in this case might be a good example in point.

Florian Schwab, Boehmert & Boehmert, Munich