Opposition to IWEAR based on earlier mark for INWEAR
24 April 2017
In this case between Lauritzen Holding AS (Lauritzen) and IC Companys A/S (IC), the General Court upheld the opposition to IWEAR based on the earlier mark for INWEAR.
Lauritzen applied to register the mark IWEAR in respect of goods in classes 18, 25 and 28, including:
- Class 18: 'Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery'.
- Class 25: 'Clothing, footwear, headgear'.
- Class 28: 'Games and playthings; gymnastic and sporting articles not included in other classes'.
IC opposed based on its earlier EU registration for INWEAR, covering identical goods in classes 18 and 25. The opposition was partially successful, with the application being allowed to proceed in relation to 'horseshoes; pouch baby carriers' in class 18, and the uncontested class 28 goods.
Lauritzen appealed to the Board of Appeal to the extent that the opposition was successful, though it was dismissed. The Board of Appeal held that:
- The relevant public was the average consumer in the EU;
- The goods were identical or similar;
- The signs had a high degree of similarity as they were visually almost identical and were phonetically similar to a high degree;
- It was impossible for the average non-English-speaking EU consumer to mentally process the marks in order to establish conceptual dissimilarity to counteract the visual and phonetic similarities.
On appeal to the General Court, the applicant criticised the Board of Appeal Decision on the basis that it did not analyse the distinctiveness of the various elements of the marks, claiming that as the marks coincided in the weakly distinctive element 'wear', the differences between the marks (being the letter 'N') would be significant, such that the likelihood of confusion would be reduced. Further, the applicant argued that 'I', 'in' and 'wear' are basic English words, and would also be understood by the non-English speaking public, such that they'd be able to draw a conceptual distinction between the marks. It was also put forward that consumers would pay greater attention to the beginning of the signs, ie, the portion of the mark which contained the differing element, such that confusion would not arise. The applicant also argued that the Board of Appeal failed to take into account that the mark "wear" for goods in classes 18 and 25 would be descriptive and non-distinctive.
An 'N' is enough
The GC agreed with the global assessment conducted by the BOA resulting in a finding of a likelihood of confusion. The high degree of visual and phonetic similarity between the marks was enough to outweigh the fact that the earlier mark may be considered weakly distinctive.
The applicant's arguments regarding the distinctiveness of the earlier mark were disregarded on the basis they were inconsistent. On the one hand, it was argued the earlier mark lacked distinctiveness, but on the other, it was claimed that the earlier mark had a low degree of distinctive character. If the applicant wished to challenge the distinctiveness of the earlier mark the proper route would be via invalidation proceedings.
The General Court confirmed that the relevant public was the EU consumer and ,even if the English speaking consumer wasn't confused, it would be sufficient that non-English speaking consumers would be.
The applicant's argument that the relevant public would break down the sign into elements with distinct meanings would only apply when considered through the eyes of the English-speaking public. Whilst it was accepted that the English-speaking public could distinguish the marks conceptually, the marks (and their component parts) would have no meaning for the non-English speaking public. The Board of Appeal had assessed the marks in light of different EU languages. Unless English language rules were applied, the marks were almost phonetically identical (eg, ee-ware / een ware, or, ee way ar / enn way ar).
The applicant's argument that consumers pay greater attention to the beginning of signs could not succeed: EU case law does not hold that to be true in all cases. The General Court held that the difference between the marks (namely, the letter N) was not sufficient to offset the visual similarity. In addition, the marks were not especially short, so the absence of the 'N' could go unnoticed by the average consumer. Further, taking account of the fact that the goods are clothing products, preferential weighting can be given to the visual perception of the marks – the selection of clothing is tends to be a visual choice so visual similarity can play a greater part in the global assessment.
The General Court held that the Board of Appeal had acted correctly by relying on the overall impression of the marks in finding a likelihood of confusion.
The case reaffirms that the global assessment of a likelihood of confusion is multifaceted, and various factors need to be weighed up.