French speakers, visual similarity sink AGILE mark

Today's pick of the Community trade mark appeals is Case T‑386/07, Peek & Cloppenburg v Office for Harmonisation in the Internal Market, Redfil. Redfil applied to register the 'Agile' figurative mark (right) for 'bags, rucksacks’ (Class 18), 'sport footwear, shirts, vests, jackets, pullovers, socks, trousers, hats, berets, visors’ (Class 25) and 'golfbags, golfing gloves, golf clubs, games balls’ (Class 28). Peek & Cloppenburg opposed, citing various national and Community trade mark registrations for the word AYGILL'S for goods in Classes 3, 6, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27 and 28 and maintaining that, on account of the similarity of the respective marks and the similarity/identity of goods, there was a likelihood of confusion among the relevant consumers.

The Opposition Division agreed and upheld the opposition. The Second Board of Appeal had other ideas. Since the earlier national registrations and the earlier Community registration were identical, the Board based its decision exclusively on the CTM. However, while the relevant respective goods were identical, the marks were only slightly similar: they were visually similar only to a low degree, their phonetic similarity was limited to French; there was no conceptual similarity. Accordingly, on a global assessment of the likelihood of confusion, despite the inherently distinctive character of the earlier mark and the identity of the goods in question, there was no likelihood of confusion between the marks. The degree of phonetic similarity between two marks was held to be of less importance here, since the respective goods were marketed in such a way that the relevant public, when making a purchase, usually perceived the mark designating those goods visually.

Peek & Cloppenburg's appeal to the Court of First Instance was upheld and the decision of the Board was annulled. Said the Court:

"25 ... the first four letters of the mark applied for, namely ‘a’, ‘g’, ‘i’ and ‘l’ are included in that order amongst the first five letters of the earlier mark, namely ‘a’, ‘y’, ‘g’, ‘i’ and ‘l’. Furthermore, it should be noted that the mark applied for has only five letters and that the earlier mark has only seven and that, therefore, they have in common a majority of the letters of which they are constituted. It can be deduced from those elements that the consumer will perceive the signs at issue as being visually similar despite their different ending, namely the letter ‘e’ for the mark applied for and the letter ‘l’ followed by an apostrophe and the letter ‘s’ for the earlier mark. In that regard, it should be recalled that, according to established case-law, the consumer generally pays greater attention to the beginning of a mark than to the end [citation omitted]. ...

27 ... the Board of Appeal was wrong to take into account the particular font used by the mark applied for in its comparison of the signs at issue. As the applicant is correct to note, since the earlier mark is a word mark, its proprietor has the right to use it in different scripts, such as, for example, a form comparable to that used by the mark applied for [citation omitted].

28 ... the Board of Appeal’s analysis of the visual comparison of the signs at issue was incorrect in so far as it concluded that there was only a low degree of similarity there, there being, at least, an average degree of visual similarity between them. ...

34 ... the signs at issue are visually and phonetically similar, but conceptually different.

35 ... conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs at issue. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately [citation omitted].

36 However, ... the conceptual difference between the signs at issue is not, in the circumstances of the present case, such as to neutralise the similarities found to exist.

37 ... in light of the visual and phonetic similarities between the marks Aygill’s and Agile, it cannot be excluded that consumers of the goods in question might attribute the same conceptual content to the earlier mark as to the mark applied for.

38 Therefore ... it is apparent that the effect of the conceptual difference between the signs at issue could attenuate the established visual and phonetic similarities, but not neutralise them.

39 It follows that the signs at issue must be considered to be similar overall, but to a low degree with regard at least to the French-speaking public, which, apart from a visual similarity, will also perceive a phonetic similarity between them".

Since there was a greater degree of similarity than that found by the Board, the Board was wrong to exclude that there could be a possibility of a likelihood of confusion, .

The IPKat suspects that he has not heard the last of this case. While he agrees that the degree of similarity between the marks is greater than that which the Board found, as a non-Francophone feline he does not feel qualified to make his own assessment of the degree of similarity or its impact on the consumer. However, this case looks like a close call and Redfil, having gone so far and trailing 2-1, may reckon that it has little to lose from an appeal to the Court of Justice.