Likelihood of confusion found due to common dominant element

European Union
In SE-Blusen Stenau GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-477/10, November 30 2011), the General Court has upheld an appeal by SE-Blusen Stenau GmbH against a decision of the First Board of Appeal of OHIM in which the latter had dismissed an opposition by SE-Blusen.

In May 2007 Sport Eybl & Sports Experts GmbH applied to register the figurative mark shown below as a Community trademark for the class heading of Class 18 and “sportswear and footwear for sports; cyclists’ clothing” in Class 25 of the Nice Classification:

On publication, SE-Blusen filed an opposition based on an earlier German registration for the word mark SE SO EASY, registered, among other things, for the class headings of Classes 18 and 25. The grounds for the opposition where those laid down in Article 8(1)(b) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009).

In September 2009 the Opposition Division of OHIM upheld the opposition on the grounds that there was a likelihood of confusion in respect of the goods at issue in Classes 18 and 25. Eybl appealed.

The First Board of Appeal of OHIM upheld the appeal. In the board’s view, because of the dissimilarities between the marks in conflict, there was no likelihood of confusion between the marks. SE-Blusen appealed to the General Court.

Before the court, SE-Blusen raised a single plea alleging infringement of Article 8(1)(b). It argued that the opposition was well founded because there was a likelihood of confusion between the marks. In the opponent’s view, the First Board of Appeal had incorrectly assessed the visual, phonetic and conceptual similarities between the marks by inadequately considering the weight of the common word element 'SE', and the role of the additional word elements 'Sports Equipment' in the contested application and 'So Easy' in the prior registration.

The General Court set out the established principle that, when considering the likelihood of confusion, the assessment of the similarity between two marks means more than just taking one component from a composite mark and comparing it with another mark. In contrast, 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 mark may not, in certain circumstances, be dominated by one or more of its components (see Medion (Case C-120/04) and Shaker (Case C-334/05 P)). The General Court referred to the decision in Nestlé (Case C-193/06 P) and held that the assessment of the similarity between composite marks can be carried out solely on the basis of one element if that component is likely to dominate by itself the overall impression which the relevant public retains of that mark; in that scenario, the other components of the marks are negligible in the overall impression created by the mark.

Contrary to the First Board of Appeal, the General Court found that this was the case in the present opposition. The General Court held that the marks were similar on the following grounds:
  • The element common to both marks, the letters 'SE', did not have a meaning in the German language. Consequently, this element was of average distinctiveness. Furthermore, because of their position, size and stylisation, the letters 'SE' were dominant in the contested application.
  • The words 'Sports Equipment' formed part of the English language and were easily understood by the German public. Therefore, the General Court held that 'Sports Equipment' was descriptive in relation to the goods in Classes 18 and 25.
  • The words 'So Easy' in the earlier registration were laudatory; consequently, the distinctiveness of this element was low.
Considering the visual, phonetic and conceptual similarities between the dominant element 'SE' in both marks, the General Court found that the marks were similar. Given the identity between the conflicting goods and the court’s findings regarding the similarity of the marks, the court concluded that there was a likelihood of confusion between the marks. It thus annulled the decision of the First Board of Appeal.

This case serves to highlight that descriptive elements in a mark must not be given much consideration when assessing the similarities between two marks in conflict.

Florian Traub, Squire Sanders & Dempsey (UK) LLP, London

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