Nexus: Article 8(1)(b) EUTMR

Are two different whales conceptually identical? Fourth Board of Appeal finds likelihood of confusion despite some visual dissimilarities between marks

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Can simple things become difficult? In a recent decision, the Fourth Board of appeal reaffirmed a basic truth: if your sign has the same concept of another, then there is conceptual identity between these two.

Having recognized that there are indeed differences between the signs, in this case the Board affirmed that such differences constituted minor elements of secondary importance which the average customer would not be likely to identify or remember.

Background

In September 2017, Twothirds SL (the Applicant) sought to register the following figurative mark as an EU Trade Mark (EUTM):

Registration was sought for certain goods in Class 25 (clothing, headgear and footwear) of the Nice Classification.

In December 2017, P2M Société par actions simplifiée à associé unique (the Opponent) filed a notice of opposition on the basis of its earlier registered EUTM:

The earlier EUTM had been registered since 2016 for certain goods in Classes 18, 24 and 25 (clothing for women, men and children, footwear, slippers, pants, underwear, suits, shorts, trousers, shirts, sweaters, jackets, parkas, socks, underwear, swimming costumes, robes, gloves, belts, hats, and caps).

The Opposition Division found that there was a likelihood of confusion pursuant to Article 8(1)(b) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR) in respect of the goods covered by the earlier EUTM. It also held that the signs were visually similar to an above average degree as well as conceptually identical because they both depicted a whale.

Appeal to the Fourth Board of Appeal: parties’ arguments

The Applicant appealed the decision to the Fourth Board of Appeal of EUIPO in March 2019, arguing that the conflicting signs are visually dissimilar as they give a different global impression. In particular, the earlier mark:

- represents a grey ellipsoidal shape whilst the contested sign has a black rectangular shape,

- comprises soft, non-sharp lines, while the contested sign is a square with marked angles,

- has humanised features with a smiling mouth, while the contested sign has inexpressive features,

- has a short tail, rounded and geared to the right, whereas the tail in the contested sign is addressed to the top and slightly angled to the left, with an angular finishing, and

- has a significantly smaller tail as opposed to the tail in the contested sign which comprises almost a one third part of the image.

Furthermore, the conceptual similarities between the signs were not enough to counteract the visual dissimilarities: even though the signs represent the same idea, that is an animal that is cetaceous, the objects were represented differently because the later sign represents a cachalot and the earlier mark is a blue whale.

The Opponent argued that the signs were visually highly similar and conceptually identical. The main features of the marks are the same since they depict a whale, placed in profile and therefore they also give the same overall impression. Should there be a phonetic comparison between the signs, both would be referred to as ‘whale’, which also leads to a finding of aural identity between them.

The Board’s considerations

Comparison of the goods

As correctly reasoned by the Opposition Division, the contested goods ‘clothing’ and ‘footwear’ are identically included in both lists of goods. The contested goods ‘headgear’ includes as a broader category the earlier mark’s ‘hats and caps’. Therefore, all the contested goods were found to be identical.

Comparison of the signs

The comparison of the marks includes an assessment of the visual and conceptual similarity of the signs, based on the overall impression given by the marks and bearing in mind their distinctive and dominant elements.

Visually, both marks show the mere silhouette of a simplified version of a whale represented in profile and facing to the left. Both images are characterised by a large head, one open white eye and a slightly open mouth, both placed in the lower left part of the head, and a tail with a Y-shaped end facing upwards. There are no specific characteristics that will make the relevant public at large – which is not specialised in cetacean species – to conclude that the whale represented in the contested sign will be seen as a cachalot unlike the image of a blue whale represented in the earlier mark.

"CatorusWhalus"

It is true that there are minor elements that differ between the signs. For example, the whale in the earlier mark has a more ellipsoidal shape, a rounded tail and a smiling mouth as opposed to the more rectangular shape of the head, the elongated and slightly tilted tail and the straight mouth of the whale represented in the contested sign. However, all these constitute minor elements of secondary importance which the average customer is not likely to identify or remember. The marks were therefore considered visually similar to an average degree.

The signs were also considered conceptually similar since they both convey the concept of a whale.

Assessment of the likelihood of confusion

It follows from the wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion but serves to define its scope (C-342/97, Lloyd Schuhfabrik). Therefore, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings, constitutes a likelihood of confusion.

The assessment must be a global one, taking into account the similarity between the marks and goods covered by the marks in question. Accordingly, a lesser degree of similarity between the goods or services in question, may be offset by a greater degree of similarity between the marks, and vice versa (C-39/97, Canon).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The level of attention of the relevant consumer may vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the marks but must place his trust in the imperfect picture of them that he has kept in his mind (T-186/02, BMI Bertollo v OHMI).

By taking into account the identity of the goods, the average degree of visual similarity and the conceptual identity between the signs, the normal level of inherent distinctiveness of the earlier mark and the normal level of attention of the relevant public, the Board concluded that there was indeed a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

Comment

The conclusion is in line with established EUIPO practice. Indeed, as one can also read in the EUIPO Guidelines (here, at §3.4.4.4.), “[w]hen two marks consist of or contain figurative elements and/or shapes and they represent the same or similar objects or ideas, the signs will be conceptually identical or similar.” The following signs were indeed found to be conceptually identical:

Bottom line: same concept means conceptual identity.

General Court says that relevant public’s attention is ‘average at best’ when assessing likelihood of confusion relating to games and computer games (so that DUNGEONS is confusingly similar to DUNGEONS AND DRAGONS)

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In an intriguing decision delivered earlier this month, the General Court addressed, among other things, the question of the level of attention of the public of games and computer games. It concluded that, even if (most of) the relevant public displays a high level of attention, this does not exclude that, in view of the development of the market, games and computer games are also intended for consumers who have a level of attention that is ‘average at best’. The likelihood of confusion is therefore to be assessed having regard to the public which displays the lowest level of attention.

Background

In September 2014, Kalypso Media Group filed (the Applicant) sought to register the word mark ’DUNGEONS’ as an EU trade mark (EUTM). The application was for certain goods in Classes 9 (computer game software), 28 (games for amusement arcades and electronic games and coin-operated games, playing cards, toy figurines) and 41 (provision of online computer games and electronic publication services; games on the internet) of the Nice Classification.

In February 2015, Wizards of the Coast LLC (the Opponent) filed a notice of opposition on the basis of its two earlier registered EUTM ‘Dungeons & Dragons’. One of the two earlier registered EUTMs had been registered since November 2009 for certain goods and services in Classes 9 (scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments), 28 (toys, games and playthings, gaming machines including slot machines) and 41 (education, entertainment, sporting and cultural activities) of the Nice Classification.

In light of Article 8(1)(b) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR)), the Opposition Division held that there was a likelihood of confusion in respect of all goods and services covered by the earlier marks. The applicant appealed the decision to the Fourth Board of Appeal of EUIPO in April 2018.

The Fourth Board of Appeal of EUIPO dismisses the appeal

In assessing the likelihood of confusion, the Board considered that, since the earlier mark was an EUTM, the relevant territory for assessing the likelihood of confusion was that of the EU and all its Member States. Furthermore, the Board endorsed the findings of the Opposition Division regarding the identical and/or similar nature of the goods and services covered by the signs at issue. Following a comparison of the two marks, it also found that, visually and phonetically, the degree of similarity between them was ‘above average’.

The signs at issue were similar to ‘an average degree’ from a conceptual point of view. The inherent distinctiveness of the earlier mark was considered to be average as well. The Board therefore concluded that that there was a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR for all the goods and services covered by the trade mark applied for, at least for the English-speaking part of the relevant public.

Appeal to the General Court

The applicant appealed the Board’s decision arguing – among other things – that the Board had been wrong to consider the level of attention of the relevant public as ‘average at best’. In particular, the relevant public would have a high level of attention in relation to games and computer games. On that market, there are hundreds of games and computer games that are available simultaneously, for which also prices are high. The decision to buy those products is therefore based on the prior gathering of useful information. This would suggest that purchasing habits in relation to games and computer games differ from purchasing habits in relation to actual everyday items.

The General Court’s considerations

The General Court noted that, when assessing the likelihood of confusion, the public with the lowest level of attention must be taken into account.

Considering that the games and computer games covered by the trade marks in question are intended for both a specialised public and the general public, account must be taken of the normally informed and reasonably attentive and prudent public in the EU displaying an average level of attention. In this regard certain factors must be taken into account:

1. The wording of the goods covered by the marks at issue and not the goods actually marketed under those marks

Because the specific arrangements for marketing the goods or services in question may vary over time, these cannot be taken into account for the purposes of a prospective analysis of the likelihood of confusion. Instead, the assessment must be performed in light of the wording of the list of goods or services for which registration is sought, as it appears on the application.

I purr-fer winning in poker

2. The categories ‘games’ and ‘computer games’ cover a fairly large number of different goods that are not considered luxurious or niche and thus reserved for a limited number of people

The Court observed that those goods are available both online and on a self-service basis, they are widely promoted on different television channels, depending on the target age group, their price is relatively low and special skills or knowledge are not essential or required for their purchase. In other words, games and computer games are easily accessible to all, including those without special knowledge, and may therefore be assimilated to everyday consumer items, on the grounds that they are no longer sold merely on ‘focused markets’ but have rather gone ‘mainstream’.

3. Certain game and computer game consumers do not ‘tend’ to buy the goods spontaneously but rather display a high degree of attentiveness

Even if this may be the case, according to the General Court, the availability and distribution of those goods and services on the market and of the fact that special skills or knowledge are not indispensable or required in order to purchase them, it cannot be excluded that consumers who do not have such knowledge or skills may purchase such goods (eg, when buying the goods as a gift to someone else).

4. The computer and video game industry has shifted ‘from focused markets to mainstream’

According to the General Court, the Board rightfully took into account the specific characteristics of the market for games and computer games. This is because the rules relating to game product development have changed, and the relevant customer circle extends to all age groups, regardless of gender and specific knowledge about the gaming industry. In addition, games are ‘disposable’ products, in the sense that the continuous evolution, specific to the gaming and computer games industry, entails that consumers frequently replace their goods and ancillary services with new goods and services offered on the market.

This meant that even if the relevant public shows a high level of attention, this does not exclude that, in view of the development of the market, games and computer games are also intended for consumers who show a level of attention that is ‘average at best’.

The General Court then went on to consider the identity and similarity of the disputed goods and services covered by the signs at issue, the visual and phonetic similarity and the conceptually average similarity of the signs, and the average inherent distinctiveness of earlier mark. It thus dismissed the action and established that that there was a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

Nexus

Are two different whales conceptually identical? Fourth Board of Appeal finds likelihood of confusion despite some visual dissimilarities between marks

General Court says that relevant public’s attention is ‘average at best’ when assessing likelihood of confusion relating to games and computer games (so that DUNGEONS is confusingly similar to DUNGEONS AND DRAGONS)

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