Low distinctive character of a mark does not imply that there is no likelihood of confusion

European Union
  • The EUIPO found that there was a likelihood of confusion between two marks with the similar word element ‘diet’, which covered the same or similar goods
  • The applicant appealed, claiming that court should compare the figurative elements rather than word elements as these were the dominant characteristic
  • The General Court upheld the EUIPO’s finding that marks had a weak distinctive character and would cause confusion

In a recent judgment delivered in Case T-486/17, the General Court confirmed the decision of the EUIPO's Board of Appeal that there was a likelihood of confusion between the marks shown below.

Both marks covered various identical or similar goods in Classes 5, 29 and 30.

The word elements in the respective marks in conflict alluded to the term ‘diet’. Therefore, both marks were considered to have weak distinctive character in relation to part of the goods contained in the subject classes that could be associated with a balanced diet (eg, infusions, tea, fruits and vegetables).

The applicant used this argument to defend its position that the word elements of the respective marks barely possessed any distinctive character and that, therefore, the dominant elements of the marks were figurative elements. Thus, when assessing the possible existence of a likelihood of confusion, the comparison of the marks should have focused on the figurative elements. Moreover, the applicant argued that given the weak distinctive character of the earlier mark, the opponent could not have a monopoly over ‘dieto’. Therefore, the applicant challenged the Board of Appeal’s application of the principle of interdependence since it considered that this principle could not be applied “in order to automatically offset the lack of distinctiveness of the signs at issue with the similarity between the goods at issue”.

Nevertheless, the court rejected these arguments, declaring that acknowledgement of the weak distinctive character of the earlier mark did not prevent there being a likelihood of confusion. Firstly, it held that while the predominant element in the earlier mark was the word element DIETOR, there was no dominant element in the applied-for mark since “the figurative element of the sign making up the mark applied for does not have any particular meaning which could divert consumer’s attention away from the word element”. Thus, “the overall impression created by the mark applied for must be taken into account in the comparison with the earlier mark.

When conducting an analysis of the marks from a visual, phonetic and conceptual standpoint, the court concluded that “the fact that the stem “diet” confers on the respective word elements of the signs at issue a weakly distinctive character does not mean that that element should be ignoredin the comparison of both signs. Thus, the court found that the signs in question had some visual and conceptual similarity, as well as a high degree of phonetic similarity. As a result, because of the principle of interdependence, the General Court concluded, as did the Board of Appeal, that there was a likelihood of confusion on the part of the relevant public.

Comment

The weak distinctive character of the earlier mark was insufficient on its own to exclude a likelihood of confusion with other marks. To rule out a likelihood of confusion on the sole ground that the common element in the marks in question had weak distinctive character – as sought by the appellant – would mean that the owner of the earlier mark was improperly deprived of the rights attached to its registration due to an incorrect reliance on general assumption.

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