Likelihood of confusion found due to highly distinctive character of earlier CTM

In Pedro Group Pte Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-38/13, May 8 2014), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM (Case R 271/2011-4) in which the latter had partially refused Pedro Group Pte Ltd’s Community trademark (CTM) application for the word mark PEDRO under Article 8(1)(b) of the Community Trademark Regulation (207/2009).

Singaporean company Pedro Group filed an application for the registration of the word mark PEDRO (CTM No 7.541.857) in Classes 18, 25 and 35 of the Nice Classification.

Spanish company Cortefiel SA opposed the application in respect of all the goods claimed, based on two prior trademarks:

• the Community figurative mark PEDRO DEL HIERRO (CTM No 1.252.899) registered in Classes 18, 25 and 35, among others:
  
• the international figurative mark PEDRO DEL HIERRO (IR No 864.740), registered in Classes 25 and 35, among others:
  

The international trademark claimed to have effect in Bulgaria, Spain and Romania. However, the trademark designated many countries, but not Spain (the basis for the international registration was certain Spanish trademarks, on which the opposition was not based). Therefore, the Board of Appeal did not take into account this earlier trademark, since it considered that Cortefiel had failed to substantiate this registration with effect in Spain.

The grounds in support of the opposition were those set out in Articles 8(1)(b) and 8(5) of the Community Trademark Regulation.

At OHIM’s request (following a request by Pedro Group), Cortefiel submitted proof of use of its earlier CTM.

The Opposition Division of OHIM rejected the opposition, considering that:

• given the differences between the signs, there was no likelihood of confusion; and
• no evidence had been submitted which proved that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier CTM.

On appeal by Cortefiel, the Fourth Board of Appeal considered that:

• Cortefiel had submitted proof of genuine use of the earlier CTM in Spain regarding clothing for ladies and gentlemen, footwear and handbags.
• It had been proven that the earlier CTM had a highly distinctive character in Spain in respect of clothing.
• The reputation of the said CTM had not been proven and, therefore, the opposition based on Article 8(5) CTMR had to be rejected.
• Certain goods in Classes 18 and 25 were identical and others had a low degree of similarity.
• The degree of visual and phonetic similarity between the marks at issue was low, and the conceptual comparison remained neutral.
• There was no likelihood of confusion between the marks as regards footwear and handbags, but there was a likelihood of confusion with regard to certain goods in Class 25 (“articles of clothing for men and women; socks and stockings; head scarves, neck scarves, shoulder scarves, shawls, ties, bow-ties, gloves, foulards, lingerie, brassieres, panties (other than sanitary), lingerie tops, undershirts, underpants; skirts, dresses, shorts; blouses, tee-shirts, polo shirts, shirts, cardigans, chemises, vests, blouses, trousers, pants, neckties, coats, wind resistant jackets and wind resistant tops, sweaters, pullovers, waistcoats, jackets, overcoats, blazers, hunting jackets, gabardines, bermudas, ponchos, stoles, suspenders, neckerchieves, pyjamas, mittens, bathing costumes, blousons, bathrobes, sports clothing, tracksuits, ready-made linings, swim wear, thermal wear”).

Therefore, it annulled the Opposition Division’s decision and rejected the CTM application for the abovementioned goods.

In its action before the General Court, Pedro Group relied on three pleas in law:

1. infringement of Articles 15 and 42 of the regulation as regards the proof of genuine use of the earlier CTM (according to Pedro Group, the Board of Appeal had followed an incorrect approach to the examination of the evidence and Cortefiel had not proven the use of the earlier CTM);
2. infringement of Article 8(1)(b) of the regulation concerning the highly distinctive character of the earlier CTM; and
3. infringement of Article 8(1)(b) of the regulation regarding the similarity of the signs.

The General Court rejected all of Pedro Group’s claims and dismissed the action in its entirety, following the reasoning of the Board of Appeal.

Concerning the first plea, the General Court referred to the decisions in Centrotherm (Case T-427/09) and Leno Merken (C-149/11). It ruled as follows:

• To assess whether a particular trademark has been put to genuine use, an overall assessment of the documents in the file must be carried out, taking into account all the relevant factors.
• The commercial volume and the length of use must be taken into account. However, commercial success is not required to assess genuine use.
• The smaller the commercial volume is, the more necessary it is for the trademark owner to produce additional evidence.
• The territorial borders of the member states must be disregarded in the assessment of genuine use in the European Union, and the mark does not need to be used in an extensive geographical area for the use to be deemed genuine.
• Although the evidence provided by Cortefiel did not include figures concerning sales and advertising, the company had submitted a lot of evidence which proved genuine use of the earlier CTM for clothing, shoes and handbags in Spain.

The General Court concluded that the Board of Appeal had taken into consideration the context and the market within which the goods covered by the earlier CTM were marketed when ruling on the genuine use of that mark. Therefore, Pedro Group’s claim was unfounded.

The General Court then examined the second and third pleas together and ruled as follows:

• The definition of the relevant public and the identity between the goods in Class 25 listed above and the goods covered by the earlier trademark were not in dispute.
• The first element of the CTM would be perceived by the public as a common masculine forename, while the other elements would be perceived as a surname. Consumers would attribute greater distinctiveness to a surname, but its addition was not capable of excluding the low degree of similarity resulting from the presence of the word element ‘Pedro’ in the marks.
• The Board of Appeal was right to find there was a low degree of visual and phonetic similarity between the signs at issue.
• It is sufficient that a relative ground for refusal under Article 8(1)(b) exists only in part of the European Union for a CTM not to be registered.
• The evidence submitted by Cortefiel, among which a printout from the website “Leading Brands of Spain” stood out, showed how intensive, geographically widespread and long-standing use of its mark had been, and this had correctly enabled the Board of Appeal to ascertain that the earlier CTM had a highly distinctive character in Spain.
• The assessment of the highly distinctive character of a mark must be made taking into account all the relevant evidence, including the market share held by the mark. However, such evidence is not required if, as in the present case, evidence of another kind enables the Board of Appeal to establish that the use of the earlier CTM has been intensive and geographically widespread so that the degree of the relevant public’s recognition of that mark is high enough to give it a highly distinctive character.

In view of the above, the General Court agreed with the Board of Appeal that, as a result of the highly distinctive character of the earlier CTM, there was likelihood of confusion between the trademarks for the average consumer in Spain between the goods listed above covered by the mark applied for and clothing for ladies and gentlemen in Class 25. Therefore, Pedro Group’s claims were unfounded.

Teresa de Sicart, Grau & Angulo, Barcelona