Marks coming from two different languages found to be conceptually similar

In Bonney v Office for Harmonisation in the Internal Market (OHIM) (Case T-214/14), the General Court has dismissed an appeal filed against a decision of the Fourth Board of Appeal of OHIM which had upheld an opposition to the registration of the word mark ATHEIST for certain goods and services on the ground of likelihood of confusion.  

In June 2011 David Bonney, a British-Irish shoemaker, filed a Community trademark application for the word mark ATHEIST, covering goods and services in Classes 18, 25 and 35 of the Nice Classification. In December 2011 Vanessa Bruno, a French fashion designer, filed an opposition against such application claiming that the mark ATHEIST was confusingly similar under Article 8(1)(b) of the Community Trademark Regulation (207/2009) to her prior French registration and international registration, designating several EU countries, for the mark ATHÉ in respect of goods and services in Classes 3, 9, 14, 18 and 25. 

In February 2013 the Opposition Division of OHIM issued a decision, based solely on the French mark, which upheld the opposition in part, with respect to certain goods and services in Classes 18, 25 and 35. In April 2013 the applicant appealed OHIM’s decision. 

By decision of August 5 2014, the Fourth Board of Appeal dismissed the applicant’s appeal. The board considered that the marks were similar to a medium degree visually and phonetically, and highly similar conceptually. It concluded that it was not inconceivable that the relevant public would assume that the goods and services in question were supplied or provided by the same undertakings. 

The applicant appealed the board’s decision before the General Court on the grounds that, first, the board had overestimated, on the one hand, the degree of phonetic and visual similarity between the marks and, on the other hand, the extent to which consumers would perceive a conceptual similarity. Second, the applicant claimed that the board had not taken sufficient account of the fact that the marks were words belonging to two different languages.

By decision of October 23 2015, the General Court dismissed the applicant’s appeal in its entirety. 

The court held that the board was correct to consider that the relevant public was the French consumer and that its level of attention was normal, which the applicant did not dispute. Moreover, the court stated that the board rightly held that the goods and services in question were identical or similar, which also was not disputed by the applicant.

With regard to the visual similarity of the marks, the court held that, given that the initial part of the later mark, on which the consumer’s attention is in particular directed, fully reproduces the earlier mark, although without an accent on the letter ‘e’, the board was entitled to consider, without making an error, that the marks were similar to a medium degree in their overall visual impression. 

With regard to the aural similarity of the marks, the court decided that, since a French-speaking consumer would pronounce the common parts of the marks in the same way, despite the lack of an accent on the letter ‘e’ of the later mark, the board did not err in finding that the marks were phonetically similar to a medium degree. 

The court also held that the board was right to find that the marks were very similar conceptually, on the following grounds:

• The board was correct in finding that the later mark ATHEIST will be perceived as meaning ‘athée’ (‘atheist’ in English), as the pronunciation of that word is identical to the earlier mark and the words are visually very similar.

• The later mark ATHEIST, which has no direct meaning in French, could also be perceived by French consumers who do not understand English or by those who do not realise that it is an English word, as a reference to the French word ‘athée’, which would be strengthened by the similarity between the later mark and the French word ‘athéiste’.

• French consumers who understand the meaning of the English word ‘atheist’ are bound to perceive the marks as being very similar conceptually.

• Contrary to what the applicant had argued, the fact that the words ‘athé’ and ‘atheist’ come from different languages, namely, respectively, French and English, cannot weaken the conclusion that the marks were conceptually similar, particularly as the English word ‘atheist’ will most likely be understood in France.

In the appeal, the applicant had also argued that, even if it may be common for a mark to be used as a sub-brand of another mark or for it to be part of a ‘family’ of marks that share a common element, producers invariably adopt a word in the same language as the precedent for the sub-brand or for the new family member.  The court held that the applicant’s above argument was by no means substantiated and could not therefore be upheld. 

The court stated that it was not therefore established that, as claimed by the applicant, the board ought to have given greater weight, in the context of its examination of the likelihood of confusion, to the fact that the later mark consisted of an English word whereas the earlier mark was analogous to a French word.

The court concluded that the board was right to find that the relevant public might believe that the goods and services in question were supplied or provided by the same undertakings. In particular, the court held that it was not inconceivable that the relevant public might perceive those marks as being related marks, designating different product lines, insofar as the earlier mark is entirely contained in the later mark, although without an accent on the letter ‘e’.

This judgment is in line with the EU principle, as set out in the OHIM Guidelines, that when a word in another language (here English) is very close to the equivalent word in the official language of the relevant territory (here French), the former word will be understood by consumers in the relevant territory even though it is a foreign word. 

Paolo Andreottola and John Olsen, Locke Lord LLP, London