No likelihood of confusion found despite identical goods

European Union
In Mirto Corporación Empresarial SL v Office for Harmonization in the Internal Market (OHIM) (Case T-427/07, March 19 2010), the General Court has rejected Mirto Corporación Empresarial SL’s appeal against a decision of the Second Board of Appeal of OHIM in which the latter had held that there was no likelihood of confusion between MIRTILLINO and MIRTO.

In July 2003 Maglificio Barbara Srl applied for the registration of the word 'mirtillino' in a stylized font as a Community trademark (CTM) for goods in Classes 3, 18 and 25 of the Nice Classification. On publication, Mirto filed an opposition under Article 8(1)(b) of the Community Trademark Regulation (40/94) on the basis of:
  • its CTM registration for MIRTO in the same classes;
  • several Spanish, Irish and UK registrations for MIRTO; and
  • a device mark containing the stylized word 'mirto' and an 'M' logo in Classes 3, 18, 20, 25 and 26.
In April 2006 the Opposition Division upheld the opposition for the goods in Classes 18 and 25 and for some of the goods in Class 3 (ie, the personal care goods), but rejected the opposition for the cleaning goods in Class 3.

Maglificio appealed. In August 2007 the Second Board of Appeal of OHIM overturned the Opposition Division’s decision in its entirety, holding that:
  • the marks had a low degree of visual and phonetic similarity;
  • the marks were clearly conceptually dissimilar for the Italian and Spanish public, these languages being those in which the words had meanings; and
  • for the rest of the Community, the words would be considered as invented and would have no conceptual meaning.
Mirto appealed to the General Court on six grounds:
  • The board’s claim that the attention level of the relevant public was high was incorrect. This should be quantified as no higher than that of the average consumer in view of the nature of the goods.
  • The claim that the marks had a low degree of visual similarity was incorrect. The marks had the same root, 'mirt', and the addition of the suffix 'illino' was insufficient to eliminate the visual similarity. The 'illino' element should be considered secondary to the 'mirt' element, partly because of the highly distinctive character of the MIRTO mark in Spain (which meant that the relevant consumer would concentrate on the 'mirt' element to the detriment of 'illino'), and partly because 'mirt' was placed at the beginning of each mark.
  • The claim that the marks had a low degree of phonetic similarity was incorrect. The marks shared the same first syllable, 'mir', which would constitute the root of the marks for the average Spanish consumer, who would thus remember this part of the marks particularly. The second syllable of the marks started with the letter 'T', and both marks ended in the letter 'O'. The marks were thus phonetically similar - especially considering the fact that, under relevant case law, the inclusion of an earlier mark in the dominant element of the later mark made it permissible to find a high degree of similarity.
  • The claim that the marks had different meanings to the average Spanish consumer was incorrect. First, the word 'mirto' was not used in everyday language and would not be known to the average consumer. Therefore, its meaning would not make the marks conceptually distinguishable. Second, while the board had adopted a purely theoretical approach, the relevant public would establish a link between the marks because 'mirto' is an original word which 'mirtillino' evokes, and 'mirtillino' finishes with the letter 'O' and has the root 'mirt'. Third, despite the board’s claim that 'mirtillino' could not be considered as a diminutive or indicating a line of children’s clothing, Mirto argued that MIRTILLINO would be perceived as a variant of MIRTO and that the relevant public would associate the marks. Fourth, the board’s reasoning was contradictory because it argued that 'mirtillino' could not be considered as a variant on 'mirto', while recognizing that, in some parts of Spain, diminutives are comprised of a root and the suffix 'illino', meaning that 'mirtillino' would be a diminutive form of 'mirto'.
  • It was recognized that MIRTO was well known in Spain. Therefore, the mark should benefit from enhanced protection, because consumers would think that the mark applied for was a variant on the earlier mark. The identity of the respective goods increased the likelihood of confusion. Mirto also referred to earlier Spanish judgments in which the applicant had been prevented from using the mark MIRTILLO in Spain, such that this application was an attempt to continue using the mark.
  • The clear visual and phonetic similarities between the marks meant that they needed no conceptual significance to the average EU consumer who was not Italian or Spanish.
The court first considered the relevant public. The board had concluded that, due to personal preferences, fashion trends and brand loyalty, the relevant public would be the average consumer of the relevant goods in the European Union, who is well informed and has a high level of attention. By contrast, Mirto had argued that the average consumer of these goods would have the same level of attention as the average consumer. The court agreed that it was not possible to state generally that the average consumer of these goods had a high level of attention. However, it held that, for the public with an average level of attention, the likelihood of confusion was higher than for the public with a higher level of attention, the latter being consumers of those goods which could be said to have an exclusive character.

Moving on to the comparison of the goods, the court confirmed that the dispute related only to the board’s assessment in relation to the cleaning and personal care products in Class 3, and that all of the other Class 3 goods were identical or similar.

In comparing the marks, the court agreed with the board’s assessment that they were conceptually dissimilar to the average Spanish consumer. It held that, because the word 'mirtillino' did not exist in Spanish, it could not, contrary to Mirto’s argument, constitute a link between the respective marks. Further, the elements 'mirt' and 'illino' had no meaning, and 'illino' was not a diminutive suffix, so the consumer would perceive the mark as a word with no meaning in Spanish. The absence of the word 'mirto' from the everyday Spanish language could not affect the issue of whether the marks were conceptually different - it could influence only the assessment of the importance to be attributed to conceptual differences in the context of global appreciation of the likelihood of confusion.

From a visual point of view, the court agreed with the board that the marks had a low degree of similarity (partly because of the stylized font of the later mark), and rejected Mirto’s arguments that the marks were visually similar, again because none of the elements of the mark applied for had any meaning to Spanish consumers. The court also confirmed that the legality of Board of Appeal decisions must be considered solely on the basis of the regulation, and not on the basis of decisions of the EU courts.

From a phonetic point of view, the court also agreed with the board that the marks had a low degree of similarity. The three additional syllables in the word 'mirtillino' distinguished it from MIRTO, even if the first syllable was what most attracted the attention of the average Spanish consumer. The unitary character of 'mirtillino', which could not be deconstructed into two elements with a distinct conceptual content, mitigated the effect of the first syllable 'mir' in the pronunciation of 'mirtillino'.

The court concluded that the marks were not conceptually similar and had a low degree of visual and phonetic similarity, and turned to the global appreciation of the likelihood of confusion. It endorsed the board’s division of the European Union into:
  • Italy, where the marks had meanings;
  • Spain, where the earlier mark had a meaning and was alleged to be well known; and
  • the remainder of the European Union, where the marks had no meaning and the earlier mark was not well known. 
The court also endorsed the board’s conclusion that there was no likelihood of confusion in any of these scenarios, rejecting Mirto’s arguments that its mark was well known in Spain. The court found that Mirto had not provided evidence that:

  • 'mirt' was seen as the distinctive element of the MIRTO mark; and
  • 'mirtillino' could be perceived as derived from MIRTO in order to designate one of Mirto’s product lines.
In conclusion, the court rejected the appeal and awarded costs against Mirto. Although the marks may have appeared on first consideration to be similar, the court unusually went into a very substantial and specific analysis of the similarity of the marks and goods, and of the likelihood of confusion, in order to reach its decision in favour of the board.

Chris McLeod, Hammonds LLP, London

Unlock unlimited access to all WTR content