Opposition based on single-letter mark successful before General Court

European Union
In Esprit International LP v Office for Harmonisation in the Internal Market (OHIM) (Case T-22/10, November 10 2011), the General Court has rejected Esprit International LP’s appeal against a decision of the Fourth Board of Appeal of OHIM in which the latter had upheld an opposition by Marc O’Polo International GmbH.

In May 2006 Esprit applied to register the figurative mark shown below as a Community trademark for the class headings of Classes 18 and 25 of the Nice Classification:

On publication, Marc O'Polo filed an opposition based on an earlier German registration for the figurative mark shown below, registered for goods in Classes 18 and 25:

The grounds were those laid down in Article 8(1)(b) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009).

In September 2006 the Opposition Division of OHIM upheld Marc O'Polo's opposition on the basis that there was a likelihood of confusion in respect of all the goods applied for. Esprit appealed.

The Fourth Board of Appeal of OHIM rejected the appeal, agreeing that there was a likelihood of confusion between the marks. In arriving at this decision, the board held that:
  • the goods covered by the marks were identical; and
  • the marks themselves were sufficiently similar to give rise to a likelihood of confusion.
Esprit International appealed to the General Court.

Esprit International raised a single plea alleging infringement of Article 8(1)(b) of the regulation. It argued that the opposition should have been dismissed on the grounds that that there was no likelihood of confusion. In Esprit’s view, the board had incorrectly applied the principle of assessment of the marks: it had wrongly considered that the letter element of the contested application was dominant, without sufficiently demonstrating why the other elements were negligible. Esprit also argued that the overall impression of the marks was different, so that there was no likelihood of confusion in Germany.

The General Court set out the established principle that the likelihood of confusion must be assessed globally, which requires consideration of all the factors relevant to the case in addition to case law. It was necessary to consider the extent of the similarity between the goods covered by the marks (which, in this case, was not disputed by the parties) and the extent of the similarity between the marks. The latter required an analysis of the visual, phonetic and conceptual similarity of the marks, bearing in mind any distinctive or dominant components.

As the earlier mark was registered in Germany, for the purposes of assessing confusion, the relevant public was deemed to be the general public in Germany. Furthermore, in view of the fact that the goods concerned were in Classes 18 and 25, the General Court held that the relevant public should be taken to be the average German consumer, who is reasonably well informed and reasonably observant and circumspect. In that context, the court rejected Esprit’s argument that consumers were more observant and circumspect with regard to the goods in question because they were targeted at 16 to 35-year-olds and sold at a medium to high price range. The court agreed with the board that the particular circumstances in which the goods in question were marketed were irrelevant, since these may vary in time; it was therefore inappropriate to take those circumstances into account in the analysis of the likelihood of confusion. The court concluded that the goods in Classes 18 and 25 were mass consumption goods, frequently purchased and used by the average German consumer. The degree of attention paid to these goods was thus no higher than average.

The General Court held that the marks were similar on the following grounds:
  • There was a degree of visual similarity between the marks, taking into account the earlier mark and the letter element of the mark applied for;
  • There was a degree of phonetic similarity between the marks. It did not matter whether consumers would perceive the conflicting marks as a stylisation of the letters ‘e’ or ‘c’; it was sufficient that a substantial part of the relevant public would recognise both marks as the same stylised letter and would thus find the marks similar.
  • There was a conceptual link between the marks as far as part of the public would perceive them as stylisations of the same letter.
The court also looked at the distinctive and dominant elements of the mark applied for and held that the board was correct in finding that neither the depiction of the trouser pocket nor the wave-like line was relevant for the correct assessment of the similarities between the marks at issue.

This decision shows that the extent of the visual, phonetic or conceptual similarities in the global assessment of marks with a view to determining the likelihood of confusion is not based on a subjective approach, but depends on the facts specific to the case. The General Court concluded that, in the light of the conditions under which the goods are marketed, the nature of the goods and the perception of the public, the visual aspect was the most important.

It is also interesting to note that the German Patent and Trademark Office has rejected an opposition by Marc O’Polo concerning identical marks in a decision of December 5 2008. While neither OHIM nor the General Court are of course bound by the earlier decision of the German Patent and Trademark Office, it is striking that, after many years of EU trademark law harmonisation, there are still so many contradictory decisions between Alicante and Luxembourg on the one hand, and the national trademark authorities on the other.
Florian Traub, Squire Sanders & Dempsey (UK) LLP, London

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