In an intriguing judgment delivered earlier this month (T-149/19), contrary to the earlier decision of the EUIPO Second Board of Appeal, the General Court (GC) excluded any likelihood of confusion between the two signs represented below, despite sharing the same public and considering the latter’s average level of attention, and the average degree of conceptual similarity between the signs.

In 2016, Nestlé (the Applicant) sought to register this sign as an EU Trade Mark (EUTM):

The application was for certain goods in Classes 29 (soups, soup concentrates, preparations for making soups, stock also in the form of cubes, of tablets or granulated, bouillons, bouillons concentrates, preparations for making bouillons, broth) and 30 (flours and preparations made from cereals, bread, yeast, pastry, rice, pasta, noodles, foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes) of the Nice Classification.

Based on Article 8(1)(b) of Regulation 2017/1001 (EU Trade Mark Regulation EUTMR)), Pasa Africa opposed the application, claiming that the applicant's sign conflicted with its earlier EUTM designating goods in Classes 29 (meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats) and 30 (coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard; vinegar, sauces (condiments), spices, ice’) of the Nice Classification:

In 2017, the Opposition Division rejected the opposition, assuming that the goods at issue would be identical (there was also a question regarding the senior trade mark’s use).

The decision was upheld by the Second Board of Appeal (the Board), which emphasized, among other things, the low distinctiveness of the earlier trade mark and the average degree of visual and conceptual similarity of the signs at issue. In particular, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR could be established if the goods in question were regarded as identical. The case was therefore sent back to the Opposition Division for a decision on the genuine use of the earlier mark and the actual comparison of the relevant goods.

The Applicant appealed the Board’s decision, arguing that: (1) the signs at issue would not be visually and conceptually similar; and (2) the earlier trade mark only has a weak distinctive character because human figures do not have an inherent distinctive character. As such, no likelihood of confusion could be found, irrespective of the characterization of the goods at issue.

According to Nestlé, the visual component should have been excluded from the assessment. The Board should have instead focused on the distinctive elements of those marks which were capable of differentiating them, namely the stylized character and direction of those figures as well as the colours and contour of those marks.

In respect of conceptual similarity, the Board should have found that both the human figure and the figurative element of the earlier mark constituting a ‘check icon’ indicated to the relevant public that the goods marketed under that mark were beneficial to or recommended for health, whereas the mark applied for conveyed the notion of strength.

The EUIPO submitted that the Board had correctly found that the marks would be visually and conceptually similar to an average degree and that the earlier mark had an average distinctive character.

The global assessment of the likelihood of confusion must be based on the overall impression conveyed by the signs at issue, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details (OHIM v Shaker, C‑334/05 P).

In considering such distinctive and dominant elements, the Court noted that the figures in both marks are likely to represent strong or healthy people. In those circumstances, since the goods in question are foodstuffs, those figures are likely to indicate to the relevant public that the goods contribute to making people who consume them strong or healthy. Therefore, the figures are not necessarily perceived as indicating the commercial origin of those goods; the distinctive character of those figures is thus weak.

The figurative elements of the earlier mark are black whereas the human figure and the other figurative element of the mark applied for (depicting an escutcheon) are red and blue. Whether a mark is registered in colour or in black is not regarded as a wholly negligible element in the eyes of consumers (Pico Food v OHIM, T‑623/11).

There are also differences between the dominant elements of the marks at issue: the human figure in the earlier mark represents a man standing on one foot, whereas the lower limbs of the human figure in the mark applied for are not depicted. In addition, the shapes of the other figurative elements are not similar.

In light of the weak distinctive character of the human figures in each of the marks at issue, the GC took the view that those marks would not be visually similar.

The Court did however consider the marks conceptually similar to an average degree, since both marks are likely to evoke the notion of goods which are beneficial to health and/or strength.

The highly distinctive character of a sign is relevant only in respect of the earlier mark and not the later mark (I Marchi Italiani and Basile v OHIM, T‑133/09). Consequently, the fact that the applicant’s argument implies that the mark applied for is weakly distinctive is not such as to affect the assessment of the distinctive character of the earlier mark. Furthermore, both the human figure and the other figurative elements of the earlier mark have a weak distinctive character since there are no other specific indicia, such as the way in which the elements are combined, to indicate that the earlier mark, taken as a whole, is greater than the sum of its parts.

The mere association which the public might make between two signs as a result of their similar semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion (SABEL v Puma, C‑251/95). Therefore, in view of the weak distinctive character of the earlier mark and lack of any visual similarity, the General Court held, contrary to what the Board found, that the likelihood of confusion could not be established, despite the average level of attention of the relevant public and the average degree of conceptual similarity, even if the goods in question were to be regarded as being identical.