'Incoherent' decision on complex marks contradicts EU case law

The Court of Appeal of Colmar has held that there was a likelihood of confusion between the mark DI CARLA and the figurative mark MISS CARLA (February 25 2010).
In October 2008 an individual, Stephanie Michaeli, filed an application for the registration of the figurative trademark MISS CARLA for goods in several classes, including Classes 18 and 25 of the Nice Classification.
French company Etam lodged an opposition against the application on the basis of its word mark DI CARLA, which is registered for goods in the same classes. The French Trademarks Office upheld the opposition. Michaeli appealed, arguing that the marks were not similar. The identity or similarity of the goods was not contested.
The Court of Appeal confirmed the findings of the Trademarks Office and dismissed the appeal. However, the argumentation of the court is somewhat incoherent.
First, the court stated that:
  • the figurative element made up 80% of the MISS CARLA mark; and
  • therefore, the consumers' perception of the two marks might be different.
Further, it pointed out that:
  • the distinctiveness of the term 'Carla' in the earlier mark was weak; and
  • 'Carla' was commonly used for the goods concerned.
When comparing the two marks from a visual point of view, the court stressed that the figurative element of the mark applied for was of utmost importance. Nevertheless, it concluded that 'Miss Carla' was the dominant element of the mark.
From a conceptual point of view, the court pointed out that 'Carla' is an common Italian name. Therefore, both marks alluded to Italy, which is well known for the production of the goods at issue.
Finally, relying on the above findings with no particular logic, the court recognized that the overall impression of the marks might be different (especially due to the presence of the figurative element in the mark applied for), but still concluded that there was a likelihood of confusion among consumers.
The decision is widely open to criticism. It is difficult to understand how the court could find that the figurative element of the MISS CARLA mark was of great importance, that the overall impression of the two marks might be different and that the only common element between the two marks (the word 'Carla') had a weak distinctive character, but did not come to the conclusion that both marks could coexist.  
Moreover, the decision contradicts the position of the European Court of Justice in the QUICK Case (Case C-193/06 P), in which it was held that the similarity between two marks should be assessed based on their overall impression and in light of their dominant element, which, in the case of a word and device mark, is not necessarily the word element (for further details please see "No quick exit for QUICKY").
Séverine Fitoussi and Franck Soutoul, INLEX IP EXPERTISE, Paris

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