Visual Differences Avoid Confusion in Figurative Marks
In a recent decision concerning the impact of differing figurative elements in Community trade marks where the goods in question are identical or similar, the General Court has held that, in some cases, the differences are not sufficient to avoid a likelihood of confusion.
The case concerned the trade marks detailed below:
Prior Registration CTM Application
The applicant was an individual, Stephanie Scatizza, and the application covered ’leather and imitations of leather and goods made of these materials; hides; trunks and travelling bags’.
The opponent was Manuel Jacinto Lda and their earlier right was a Portuguese national registration which covered ‘handbags, travelling bags, umbrellas, sunshades, whips, horse-trappings and saddlery’ in Class 18. The opposition claimed there was a likelihood of confusion under Article 8(1)(b) CTMR for all the goods applied for.
The Opposition Division and the Board of Appeal upheld the opposition for ‘goods made of leather and imitations of leather; trunks and travelling bags’. The applicant appealed to the General Court arguing that the Board of Appeal had incorrectly assessed the similarity of the signs and the likelihood of confusion.
In dismissing the appeal, the General Court held that both trade marks coincide in a representation of a horse and the word element ‘horse’. Their view was that the figurative element of the horse in the earlier mark “is no less dominant or distinctive than the word element ‘horse’” and the same could also be true for the trade mark applied for.
The Court dismissed the applicant’s arguments that the word ‘horse’ is descriptive for the goods in question because none of the contested goods were related to horses. In addressing the distinctive character of the word ‘couture’ in the applicant’s trade mark, the Court felt that this was only of weak distinctive character because it is descriptive of the goods in question and would be recognised as meaning ‘haute couture’.
Visually, the Court held that the differences between the trade marks were not sufficient to avoid a weak degree of similarity between them. Even taking account of the existing differences between the trade marks, the Court held that the overall impression is that both trade marks contain the word ‘horse’ and a device of a horse.
Phonetically, the Court held that the only word present in the earlier mark is the word ‘horse’ which is reproduced in its entirety in the application. These words are identical. Although the application also contains the word ‘couture’ it is less likely to be remembered by consumers because consumers generally tend to pay more attention to the beginning of trade marks, rather than the end. The Court further held that consumers will verbally refer to both marks as HORSE. The marks were therefore held to be phonetically identical.
The Court also believed the two trade marks were conceptually identical given that the relevant public will largely understand the meaning of the word ‘horse’ and the verbal elements will be interpreted as referring directly to the figurative elements, with the result that one reinforces the other.
Having found that the trade marks are visually and phonetically similar and conceptually identical, and cover identical or similar goods, the General Court held that there was a likelihood of confusion between the trade marks.
Further, the Court held that even if the goods were bought on a visual level, such that the visual impression is of greater importance in the assessment of likelihood of confusion, the same finding would result because there remains a level of visual similarity between the trade marks. In any case, the visual differences between the trade marks are offset by the fact that the trade marks are phonetically similar, conceptually identical and cover identical and similar goods.
The decision is interesting because it relates to a figurative mark but the Court appears to have focussed less on visual similarity than the impression conveyed by the phonetic similarity and the conceptual identity of the marks.
The level of visual similarity as acknowledged by the Court is weak, at best, yet, due to the identity of the goods, the fact that the Court believes the trade marks to be conceptually identical and phonetically similar has resulted in a claim of likelihood of confusion being upheld.
As decisions of the General Court are binding on OHIM, Community trade mark applicants should be careful when filing for figurative trade marks that are visually different from other existing trade marks, but nonetheless, may be considered phonetically similar and conceptually identical, as the mark may be refused on this basis.