Global assessment is key when looking at likelihood of confusion between marks

In Calida Holding AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-597/13, October 23 2015), the General Court has ruled that the Fourth Board of Appeal of OHIM had been correct in dismissing an appeal against the Cancellation Division's rejection of an application for declaration of invalidity on the basis that there were no grounds for confusion between the figurative mark DADIDA (depicted below) and the earlier Community word mark CALIDA. The court also emphasised that the existence of a likelihood of confusion on the part of the public must be assessed globally.

Key law:

• Article 8(1)(b) of the Community Trademark Regulation (207/2009): upon opposition by the proprietor of an earlier trademark, the trademark applied for shall not be registered if, among other things, because of its similarity to the earlier trademark and the similarity of the goods or services covered by the trademarks, there is a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected.

• Article 53 of the regulation: a Community trademark shall be declared invalid on application to OHIM or on the basis of a counterclaim in infringement proceedings where, among other things, there is an earlier trademark as referred to in Article 8(2) and the conditions set out in Paragraph 1 or Paragraph 5 of that Article (relative grounds for refusal) are fulfilled.

Quanzhou Green Garments Co Ltd was granted protection of the figurative mark shown above on August 13 2008. This mark was registered under Class 25 of the Nice Classification ("clothing and children's clothing, namely coats, trousers, shirts; layettes bathing suits; shoes; caps; socks; gloves; scarfs; football shoes"). The earlier mark was registered by the applicant in this case, Calida Holding AG, under Class 24 ("fabrics for manufacturing clothing") and Class 25 ("clothing").

On July 14 2011 Calida filed an application for a declaration of invalidity in respect of the goods protected by the figurative mark under Article 8(1)(b) and Article 53, based on a likelihood of confusion. On April 30 2012 the Cancellation Division rejected the application on the ground there was no likelihood of confusion. Calida filed a notice of appeal with OHIM on June 27 2012.

On September 16 2013 the Fourth Board of Appeal of OHIM dismissed the appeal, stating that there was no likelihood of confusion, and taking the view that:

• the goods concerned were partly identical and partly similar;
• the marks at issue were visually dissimilar and aurally similar to a degree;
• the conceptual comparison between those marks remained neutral; and
• the earlier mark had a normal degree of distinctiveness.

Seeking to annul this decision, under Article 8(1)(b) Calida raised three claims against the board's decision in respect of the latter's assessment of:

• the visual similarity of the marks at issue;
• the enhanced distinctive character of the earlier mark; and
• the likelihood of confusion.

The General Court stated that any existence of a likelihood of confusion must be assessed globally. This global assessment implies interdependence between the factors taken into account, in particular, between the similarity of the trademarks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods and services may be offset by a high degree of similarity between the marks. Any global assessment of the visual, phonetic or conceptual similarity must be based on the overall impression given by the mark, and the perception of the marks by the average consumer plays a decisive role in the assessment.

Despite phonetic similarity, the General Court took the view that the marks at issue were not identical, were visually different, and were easy to differentiate between due to the different make up of letters and the size of the words. The General Court also upheld the Board of Appeal's decision that the figurative element of the trumpet in the contested mark was co-dominant with the word 'dadida', which strongly reinforced the different overall impressions of the mark, and was in no way descriptive of the goods for which the mark is registered. The different overall impression was completed by the Chinese calligraphy characters.

The General court also emphasised that a comparison must be made by examining each of the marks in question as a whole, and it is only if all other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of a dominant element.

Calida claimed that the court had come to a different conclusion in the context of disputes involving other marks before it. The General Court took the view that this did not alter the finding that the marks at issue in this case were visually different.

The General Court further acknowledged the interdependence between the public's recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. The court pointed to factors including market share and how intensive, geographically widespread and long standing the use of the mark has been in order to assess its enhanced distinctive character as a result of public recognition.

Calida claimed the Board of Appeal had erred in finding that this had not been established with respect to the earlier mark, pointing out that two previous decisions of the Second Board of Appeal had found that the earlier mark did have enhanced distinctive character. However, the General Court took the view that an applicant cannot claim to adduce evidence of enhanced distinctive character by virtue of its recognition in a separate administrative procedure, but must do so in the circumscribed context of each set of proceedings to which it is a party.

The General Court upheld the Board of Appeal's analysis, and referenced their finding that there was no evidence from independent sources as regards the market share held in any member state of the European Union, the turnover and the marketing expenditures in the relevant territory, and the perception of the mark by the relevant public.

Calida also disputed the decision of the Board of Appeal that there was no likelihood of confusion between the contested mark and the earlier word mark.

The General Court noted that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight. The General Court pointed out that, as the choice of an item of clothing is generally made visually, the visual perception of the marks at issue will generally take place prior to purchase; accordingly, the visual aspect played a greater role in the global assessment.

The Board of Appeal had found that, in light of the average distinctive character of the earlier word mark, and average degree of difference between the marks visually and phonetically, there was no likelihood of confusion, even in the case of identical goods. The General Court also took this view.

Calida claimed that phonetic similarity alone was enough to create a likelihood of confusion, given that the goods are partially identical and partially similar. The General Court stated that the phonetic similarity of the marks alone could create a likelihood of confusion within the meaning of Article 8(1)(b); however, this likelihood must be established as part of the global assessment of the conceptual, visual and phonetic similarities between the marks at issue. The General Court also noted that, even it were assumed that the earlier mark had an enhanced distinctive character, this would provide no more likelihood of confusion between the marks at issue.

The General Court rejected Calida's plea in its entirety.

Adam Eskdale, Ashurst LLP, London