No Likelihood of Confusion Between 'Boomerang' Marks
El Corte Inglés v OHIM, Case T-593/10. On 24 January 2012, the General Court of the European Union agreed with OHIM's Board of Appeal that there does not exist a likelihood of confusion between Jian Min Ruan’s Community Trade Mark (CTM) application (the sign) and the earlier CTM (the earlier mark) owned by El Corte Inglés.
The Parties did not dispute the Board of Appeal's findings that (1) the relevant public was the whole of the European Community, and (2) the goods in question were identical (both marks covered goods in Class 25, including clothing, footwear and hats).
El Corte Inglés (the appellant) argued that the marks featured significant visual similarities, in that they both consisted of the letter ‘B’ coupled with a drawing of a boomerang.
The Court disagreed and found that, visually, the similarities were weak because: (1) the relevant public could have interpreted the sign as comprising a ‘B’ or the number ‘8’, (2) it was unlikely that the figurative element in the sign would be perceived as a boomerang; and 3) the sign was white on a red background, whereas the earlier mark was black on a white background.
The appellant, on the basis of the alleged visual similarities, argued that the two marks were conceptually identical. The Court, following its conclusion on the visual comparison (ie, that the sign was unlikely to be perceived as comprising a ‘B + boomerang’), found that the marks were conceptually dissimilar.
On the phonetic comparison, the parties agreed that there was similarity only to the extent that the relevant public would understand the word element of the sign to be a letter ‘B’.
In light of the above, the Court concluded that there was no likelihood of confusion between the marks and that the opposition should be rejected. Interestingly, in reaching its conclusion, the Court confirmed that:
- with regard to goods in Class 25, the visual comparison plays a greater role in the assessment of the likelihood of confusion, because the purchase of said goods is ‘generally done visually’; and
- the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract aural and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (Les Editions Albert Rene v OHIM, C-16/06).