Pleased as punch - confusion strikes again
When push came to shove, the General Court (GC) dismissed an appeal against the European Intellectual Property Office (EUIPO) Board of Appeal's finding that there was a likelihood of confusion under Article 8(1)(b) EUTMR between the word marks PUSH and PUNCH for identical goods, being various tobacco products in class 34.
Sparking it up
By way of background, JT International S.A. (the applicant) applied to register the word mark PUSH in March 2013. Corporación Habanos, SA filed an opposition against this application on the basis of a number of national marks for PUNCH (both word and figurative marks), alleging a likelihood of confusion.
At first instance, the Opposition Division found that the marks PUNCH and PUSH were similar to varying degrees and that the goods were similar, if not identical. Nevertheless, they emphasised the brand loyalty of smokers and the corresponding high level of attention on the part of the relevant public, such that when assessing the overall impression, the conflicting signs varied in terms of additional letters and differing pronunciations of the suffixes to the extent that a likelihood of confusion was avoided.
For reasons of procedural economy, the Board of Appeal and GC focused on the earlier Spanish word mark for PUNCH and the relevant public was considered to be the Spanish-speaking public, who could not make conceptual comparisons between the marks.
Whilst the Board of Appeal agreed the goods were identical and the signs were visually and aurally similar, when taking into account the interdependence principle and the notion of imperfect recollection, they deemed the high degree of attention on the part of the relevant public to be insufficient to exclude a likelihood of confusion. The Board of Appeal highlighted the manner of sale of various tobacco products in Spain, noting that consumers must request such goods over the counter or purchase them from vending machines; in this regard, the enhanced level of attention may not be sufficient to overcome confusion in a noisy, crowded or dimly-lit venue.
On appeal, the applicant pushed back on the Board of Appeal's assessments relating to the high level of attention and the way in which the relevant public came into contact with the goods. The GC agreed that the relevant public, being Spanish-speaking consumers, had a high level of attention in light of the attachment they feel to specific tobacco brands and the expensive nature of the goods (particularly cigars). Finding that the goods were identical, the GC utilised the standard test for similarity of marks and considered that:
- Visually, the marks both consist of one word and share three identical letters including the first two letters and the final letter; consumers generally pay more attention to the beginnings of word signs than to the end and even though the marks are short, the differences in the middle strings did not rule out a finding of similarity.
- Phonetically, both PUSH and PUNCH are one syllable, with the same vowel ("U") and, importantly the same sounds at the beginning ("PU"), but also the same sounds at the end ("CH"/"SH"). Thus the signs were similar, even when taking into account the changes invoked by English pronunciation and the lack of an additional "N" in PUSH. The nature of sale of the goods, for example noisy surroundings, would only exacerbate similarity, although phonetic similarity is less important than visual similarity given how the goods are sold.
- Conceptual comparison was not possible as the word PUNCH would not be understood by the Spanish-speaking public.
Overall the GC found there to be a likelihood of confusion, even when taking into account the fact that the sale of tobacco products may be in a shop that is not busy, dark or noisy. The fact that the marks were visually similar and coincided in three out of the four or five letters, including those at the beginning and the end, gave sufficient rise to a likelihood of confusion.
This decision illustrates the difficulties encountered by companies when seeking registration of marks which may contain identical letters at the beginnings and ends of marks and is indicative of a relatively low threshold for likelihood of confusion.
Case details at a glance
Jurisdiction: European Union
Decision level: General Court
Parties: JT International SA (applicant) v EUIPO (defendant); Corporación Habanos, SA (intervener)
Date: 15 September 2016
Full decision: http://dycip.com/t-63315