Likelihood of confusion for non-negligible part of public sufficient to refuse registration

European Union

In Advance Magazine Publishers Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-1/13, July 4 2014), the General Court has dismissed an action against a decision of the Second Board of Appeal of OHIM (Case R 213/2012-2) in which the latter had refused the Community trademark application for GLAMOUR in Classes 12, 14 and 18 on account of a likelihood of confusion with the earlier international mark TUDOR GLAMOUR in Class 14 of the Nice Classification.

Firstly, the court upheld the Board of Appeal’s preliminary assessments that the goods under comparison in Class 14 were identical and that the relevant public consisted of average consumers in the European Union. In addition, the court observed that, in view of the nature of the goods in question, that public’s level of attention would be high.

Turning to the comparison of the signs, the General Court pointed out that the relevant public would perceive the signs at issue as visually and phonetically similar on account of their common word element ‘glamour’. It justified its finding by noting that:

  1. the fact that the word element ‘tudor’ is in first position in the earlier mark did not mean that the relevant consumer would attach more importance to that element;
  2. the element ‘glamour’ in the earlier mark was as important, visually and phonetically, as the element ‘tudor’, in view of its size and the number of letters and syllables of which it consists; and
  3. the difference between the two signs on account of the word element ‘tudor’ was not sufficient to cancel out the phonetic and visual similarity stemming from the identity between the mark applied for and the second word element of the earlier mark.

In the course of examining the conceptual similarity, the court found that the relevant public consisted of three ‘non-negligible’ groups of consumers:

  1. consumers with a command of English and an in-depth knowledge of English history (Group A), which would perceive the marks at issue as conceptually different (given that the word ‘tudor’ refers to a dynasty that reigned over England during the 15th and 16th centuries);
  2. consumers who have only some knowledge of English, but no knowledge of English history (Group B), which would perceive the marks as conceptually similar “to some degree”; and
  3. consumers who have no knowledge of English or English history (Group C), in respect of which no conceptual comparison of the signs at issue was possible.

The court observed that, in view of the need to ensure that the earlier mark is genuinely protected throughout the territory of the European Union, the fact that there was a conceptual difference between the marks at issue in respect of Group A could not be the determining factor in assessing whether there was likelihood of confusion between the marks. Therefore, the existence of a likelihood of confusion for the non-negligible Group C was sufficient to refuse the registration of the mark applied for.

Finally, the court endorsed the global assessment analysis of the Board of Appeal, finding that, in view of the identity of the goods in question, the visual and phonetic similarity of the signs and the fact that those signs have no meaning for a non-negligible part of the relevant public (Group C), there was a likelihood of confusion between the marks as regards Group C. That finding was a fortiori correct because, for a non-negligible part of the relevant public (Group B), there was also a conceptual similarity between the marks on account of the word ‘glamour’, which is common to both of them.

In light of the above considerations, the court dismissed the action in its entirety.

Nicolas K Dontas, Dontas Law, Luxembourg

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