The importance of objective conditions under which marks may be present in the market

European Union
  • EUIPO rejected figurative trademark on the grounds of risk of confusion with another figurative mark
  • General Court overruled decision and took a consumer-led approach to examining similarity
  • Case shows how a pragmatic assessment of two trademarks can provide vastly different results when compared to a more formulaic approach

Introduction

The General Court of the European Union has delivered its ruling on Shenzhen Jiayz Photo Industrial v EUIPO (case T-339/17) (T-339/17 Shenzhen Jiayz Photo Industrial v EUIPO - Seven (SEVENOAK)) and with it, a striking showcase of how a pragmatic assessment of the risk of confusion between two trademarks may provide starkly different results when compared to a more formulaic approach.

Facts

In Shenzhen Jiayz, the court was faced with an appeal against a decision from the EUIPO’s Boards of Appeal, which had rejected the registration of the figurative mark SEVENOAK.

It based this rejection on likelihood of confusion with the prior figurative mark shown below.

The Boards of Appeal had made a rather formalistic assessment of the likelihood of confusion, comparing the visual, phonetic and conceptual elements of the trademarks at hand. After weighing these, it found the trademarks to have “a certain overall similarity”. This was mainly due to the phonetic and conceptual coincidence of the term ‘seven’. The Boards of Appeal further considered the goods protected by both marks – bags for carrying photographic cameras – to be identical.

Armed with these two findings, the boards applied the principle of interdependence, which allows for the identity (or high similarity) between goods to offset a lesser overall similarity between the marks at hand, and thus concluded with a finding of likelihood of confusion.

Decision

In a well-reasoned ruling, the General Court overturned the boards’ decision, finding no likelihood of confusion between the two marks.

The court’s rationale focused particularly on the “objective conditions under which the marks may be present in the market”. That is, instead of simply performing an abstract comparison between signs, the court was thorough in evaluating just how the particular consumer of a very specific product  would perceive the trademarks in a real-life situation.

This in-depth approach to the comparison of the marks led the court to ask a number of questions:

  • Where does the consumer of this type of good normally make their purchase – in a supermarket, in a specialised store or on the internet?
  • Is the consumer usually accompanied by qualified sales personnel?
  • Do they buy the product based on an oral recommendation?

Pondering over these questions led the court to conclude that, for the average consumer of the relevant goods, the visual element of the trademark is predominant, since it is always examined before purchase.

The court’s more concrete approach to the comparison – putting itself in the shoes of a real-life consumer – led to a different weighing of the various elements under comparison, providing additional emphasis to the visual aspects of the trademarks. The visual element was, coincidentally, by far the one where the trademarks under comparison most differed, since they integrated distinct type fonts.

The greater role attributed to the visual aspects of the trademarks tipped the scales of the court’s assessment of overall similarity – the differences in visual perception outweighed the phonetic and conceptual similarities, which were deemed less relevant than the Boards of Appeal had found them to be. The relevant consumer, the court concluded, “would not have had the impression that the marks were similar”.

In contrast with the Boards of Appeal’s findings, the marks were considered insufficiently similar for the principle of interdependence to be applicable. The trademarks were deemed so different that not even the identity between goods could justify a finding of likelihood of confusion. Accordingly, the court ruled that there was no likelihood of confusion between the marks under judgement.

This decision is a clear example of how taking a more concrete approach to the consumer’s perception of trademarks can have important and far-reaching consequences in assessing the likelihood of confusion. It can provide fairer results, which realistically reflect the public’s experience when coming across trademarks in the world outside the court room.

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