July 24, 2023

EC rejects similarity between two fantasy figures

Judgement of 19 April 2023, Case-No.: T-491/22

The case was based on the following facts:

On 9 April 2018, a Czech company filed an EU trade mark application for the figurative mark below

for goods and services in Classes 9, 38 and 41 in the gaming sector.

A Luxembourg company filed a notice of opposition against the application in respect of all the goods and services claimed, and based the opposition, inter alia on the EU figurative trade mark registered under number 9 614 868

The opponent takes the view that there is a similarity between the two marks and that the goods and services covered by them are also identical or similar, so that there is a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of the EU Trade Mark Regulation (EUTMR).

The identity or similarity of the goods and services covered by both marks was not disputed by the parties.

However, it was disputed whether the marks shown above were similar.

The Opposition Division at the EUIPO found no similarity between the two signs and rejected the opposition as unfounded. The appeal against this decision was dismissed by the Fourth Board of Appeal. The action brought by the opponent against the decision of the Board of Appeal before the European Court in Luxembourg (EC) was also unsuccessful.

Reasoning of the Court

Like the Opposition Division and the Fourth Board of Appeal, the EC found that the comparison marks were not visually, phonetically or conceptually similar.

It admitted that the two marks had certain similarities, namely an open smiling mouth with teeth, big eyes, a top hat, two arms in gloves and two legs in shoes. In addition, the figures have the same colours, namely white, grey and black.

However, in a second step, the EC also pointed out that the abovementioned features were different in the two signs. Moreover, apart from the open mouth, the respective characteristics of the ‘central element’ were also different.

While the contested mark contains two wide-open eyes and eyebrows, the opposition mark contains only one eye, without eyebrows. In addition, the hats are of different shape. In the contested mark, the hat is of average size, tilted to the left and contains the capital letter ‘B’. In contrast, the hat in the opponent’s sign is large, tilted to the right and contains the letter ‘S’ or a dollar sign and some banknotes. The signs also differ in the position of the arms and legs in relation to the central element.  The mark applied for is represented with straight arms and shorter legs in relation to the central element. In contrast, the opponent’s sign has a bent right arm and a left arm resting on a stick. The legs are also of same length in relation to the central element.

Therefore, on the basis of those differences, the EC also concluded that the overall impression given by each of the signs was so different that the relevant public would not make a connection between the marks compared, even if there were some similarities and the signs were in the same colours.

Rather, it is the fact that the two signs are stylised differently: a happy, spherical face with wide open eyes, straight arms and short legs, on the one hand, and a one-eyed, slightly deformed face with a bent arm, an arm resting on a stick and legs of the same length as the central element, on the other.

Even if the targeted consumers do not remember every detail, they will, however, recognise the differences between the two signs and will therefore not make a connection between them.

Furthermore, no phonetic similarity between the marks could be found. In this respect, the EC first pointed out that marks consisting of purely figurative elements cannot be reproduced phonetically and that, consequently, no phonetic similarity could be found. On the other hand, if the public were to recognise and pronounce the signs affixed to the respective hats of the marks compared as the letters ‘B’ on the one hand and ‘S’ or ‘dollar sign’ on the other, no phonetic similarity could be found because of the difference in pronunciation.

Finally, no conceptual similarity could be established. The mere fact that the marks can be described by the term ‘fantasy figures’ is not sufficient.

Comment

According to settled case-law, the assessment of the likelihood of confusion must be based on the overall impression given by the marks in question, bearing in mind their visual, aural and conceptual similarity. The decisive factor in that assessment is the overall impression of the marks on the target public.

In this case, the well-known principle of experience in trade mark law applies, according to which the average consumer generally perceives a trade mark as a whole and does not pay attention to its various details. However, this decision makes it clear once again that this principle of experience does not mean that it is sufficient to make a “rough” comparison of the conflicting marks and establish certain similarities in order to find that they are similar, in particular from a visual point of view. On the contrary, it is necessary to examine each of the elements of the marks at issue in detail and then to determine whether the overall impression given by one mark is the same as the overall impression given by the other mark, or at least has similarities such as to give rise to a likelihood of confusion.

Moreover, as this case shows, assessing the conceptual similarity of the marks at issue is often difficult, especially in the case of figurative marks. This is particularly the case where the meaning of a figurative mark cannot be directly associated with a particular word. In the present case, the applicant had argued that the signs at issue, in so far as they referred to games of chance, would be perceived by the relevant public as ‘bingo balls’ or ‘lottery balls’. However, it did not provide any evidence to support its claim, and that argument therefore failed.

However, even in those cases where a particular word is immediately associated with the figurative marks to be compared, this does not mean that a conceptual similarity of the signs should be found almost automatically, since trade mark law does not recognise so-called motif protection.

For example, the Fourth Board of Appeal at the EUIPO, in its decision of 14 December 2015, Az. R 2234/2014-4, denied similarity and thus also a likelihood of confusion between the EU trade mark applied for

and the earlier opposition trade mark

The Board found that the two marks were dissimilar in terms of their overall visual impression. Both the way in which they were represented, namely a drawing on the one hand and a silhouette on the other, and the way in which they are represented in detail were clearly different. The fact that both marks depict a bird does not establish a relevant similarity. Indeed, trade mark law does not recognise the protection of motifs (with reference to the judgment of the ECJ of 11 November 1997, C-251/95 – ‘Sabèl’, Rec. 26).