Likelihood of confusion for consumers who do not speak Romance language sufficient for registration to be refused

In Giuntoli v Office for Harmonisation in the Internal Market (OHIM) (Case T-256/14, October 29 2015), the General Court has upheld a decision of the Second Board of Appeal of OHIM in opposition proceedings involving the figurative marks CREMERIA TOSCANA and LA CREMERIA.

On November 24 2010 Andrea Giuntoli applied to register the following Community trademark in Classes 30, 35 and 43 of the Nice Classification:

Société des Produits Nestlé SA opposed the application on the basis of its International registration designating the European Union for the following mark, which was registered in, among others, Class 30:

On March 20 2013 the Opposition Division of OHIM upheld the opposition with respect to the goods in Class 30 and some of the services in Classes 35 and 43.

The opponent appealed this decision to the Second Board of Appeal of OHIM, which partially upheld the appeal, finding there to be a likelihood of confusion not only in respect of goods in Class 30 but also in respect of more services in Classes 35 and 43 than originally identified by the Opposition Division (although not in respect of all of the services in those classes).

The applicant appealed the decision to the General Court, which considered the goods in question (being those for which the Second Board of Appeal had held there to be a likelihood of confusion) as being either identical or highly similar. The main issue of debate was whether the word 'cremeria', which was a common element of both signs, would be understood by a large part of the relevant public as a reference to dairy products, with the result that it would be seen as a descriptive element of the sign and thus weakly distinctive. The argument of the applicant was that, if the main element the signs had in common was a weakly distinctive element, then there should be no likelihood of confusion.

The General Court noted that, for the purposes of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered. In addition, the General Court noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he/she will identify the elements which, for him/her, suggest a concrete meaning or resemble words known to him.

In relation to the two marks in question, while the court acknowledged that the word 'cremeria' had a weak distinctive character for Italian, French and Spanish consumers, this could not be said for consumers in countries where a Romance language was not spoken, where the word had no particular meaning to consumers and therefore had to be taken to have an average degree of distinctiveness.

The General Court noted that, for an opposition on the basis of Article 8(1)(b) of the Community Trademark Regulation (207/2009) to be upheld, it was sufficient for there to be a likelihood of confusion in part of the European Union (as opposed to all of it). Therefore, if there was a likelihood of confusion on behalf of consumers in countries where Romance languages were not spoken, this would be sufficient for the opposition to be upheld, regardless of whether e.g. Italian, French or Spanish consumers might perceive the word as being descriptive of the goods in question.

As for the word 'Toscana', the court was satisfied that this would be interpreted by the entire relevant public in the European Union as the name of an Italian region (or at least as a reference to Italy or southern Europe), since the name for this region was extremely similar in most languages. Therefore, the General Court agreed that this word had a slightly below average degree of distinctiveness for the goods and services in question.

On that basis, the General Court proceeded to note that the marks were visually similar since the word 'cremeria' was the element that played the decisive role in the overall impression given by the earlier mark. This was reproduced in the later mark and had no meaning for consumers who did not speak a Romance language.

As regards the aural comparison, again the court held that the word 'cremeria' carried greater weight in the comparison to the other elements of the signs and that the marks were therefore aurally similar.

Lastly, as regards the conceptual comparison, since 'cremeria' had no meaning to consumers who did not speak a Romance language, but the word 'Toscana' did, the marks were held to be conceptually different. One would conjure up an image of a region in Italy, while the other did not.

Despite the apparent conceptual difference between the signs, the General Court’s overall assessment was that there was a likelihood of confusion between the marks for all goods and services identified by the Second Board of Appeal, at least in respect of consumers who did not speak a Romance language (which was sufficient for registration of the mark to be refused registration for such goods and services). The applicant’s appeal was therefore dismissed in its entirety.

Ciaran O’Neill, DFMG Solicitors, Dublin