Sephora fails to prevent registration of mark consisting of two undulating lines

In Sephora v Office for Harmonisation in the Internal Market (OHIM) (Case T-320/14, November 25 2015), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had dismissed an opposition against the registration of a figurative trademark consisting of two undulating lines.

Mayfield Trading Ltd filed an application with OHIM for the registration of a Community trademark in Classes 3, 35 and 44 of the Nice Classification (cosmetic products and related services) consisting of the following sign:

Sephora filed an opposition against the goods in Class 3 based on an earlier French trademark and an earlier international trademark - with effect in the Benelux, Bulgaria, Spain, Italy, Poland, Portugal and Romania - for goods in Class 3 consisting of the following sign:

OHIM denied Sephora’s opposition and granted the trademark, finding as follows:

• From a visual point of view, the earlier trademarks and the contested mark were different.

• As the trademarks were figurative, it was impossible to carry out an aural comparison and the conceptual comparison was neutral.

• Therefore, the signs were not similar in any way and, since the similarity of the signs is a necessary condition to find a risk of confusion, the trademark application had to be granted regardless of the similarity - or even the identity - of the goods.

Sephora filed an appeal against OHIM’s decision, alleging infringement of Articles 75 and 8(1)(b) of the Community Trademark Regulation (207/2009).

The General Court upheld OHIM’s decision and dismissed the appeal filed by Sephora based on the following considerations.

Regarding Article 8(1)(b) of the regulation (risk of confusion), the General Court recalled that the likelihood of confusion presupposes both the identity or similarity of the trademarks, and the identity or similarity of the products or services covered. These are cumulative conditions.

Further, the court noted that OHIM had established that the relevant public for the goods and services covered by the trademarks was the general public in the European Union. Thus, the General Court considered that the risk of confusion had to be assessed with respect to the general public of the EU territory covered by the earlier trademarks (ie, France, Bulgaria, Benelux, Spain, Italy, Poland, Portugal and Romania).

The General Court then described the sign applied for as two vertical wavy lines, turning to the left, whose upper and lower ends have a different thickness. On the other hand, the earlier trademarks consisted of a thick undulating vertical line turning to the right, with the lower half and upper half mirroring each other. The trademarks were thus different in that the line forming the earlier trademarks was directed to the right (from the bottom upwards), while the two lines forming the trademark applied for were directed towards the left (also from the bottom upwards). As regards the trademark applied for, the court noted that the relevant public would not ignore the presence of the two lines, whose direction and overall look contributed to distinguishing it from the earlier trademarks.

The General Court thus concluded that the overall impression created by the earlier trademarks was that of a compact, vertical undulating line, while the overall impression produced by the trademark applied for was that of two parallel, undulating lines. Therefore, the overall impression produced by the signs at issue was different.

As regards the comparison of the trademarks from a phonetic point of view, OHIM had rightly held that such comparison could not be made because the signs are figurative and cannot be pronounced.

The court further noted that none of the graphical elements making up the trademarks had a conceptual content and that it could not be concluded that, in the eyes of the public, the form of the earlier trademark represented the letter 'S' or that the trademark applied for represented a hair. In any case, should the public attribute a conceptual content to the conflicting signs, it would only reinforce the difference between them. The General Court thus concluded that the conceptual comparison was neutral.

In addition, the General Court held that, if it is established that there is no similarity between the conflicting signs, it can be concluded that there is no likelihood of confusion between the trademarks without the need to carry out a global assessment. This is why, as there was no similarity between the earlier trademarks and the trademark for which registration was sought, the higher distinctive character of the earlier mark or the identity or similarity of the goods or services in question was not sufficient to conclude that there was a likelihood of confusion.

Regarding Article 75 of the regulation (lack of motivation of OHIM’s decision), the General Court declared that OHIM cannot be required to consider exhaustively each of the arguments brought forward by the parties. Therefore, OHIM’s motivation may be implicit if it enables the parties concerned to understand the reasons why OHIM made a particular decision and provides the competent court with sufficient material to review the legality of that decision.

Julia Carretero, Grau & Angulo, Barcelona