When is a graphic trademark misleading?
Remarks on the General Court’s judgement dated 11 April 2019 (case no. T-477/18)
Assessing the similarity of graphic trademarks is more difficult than trademarks with verbal elements. In the latter case, a number of principles have been developed in the jurisprudence, helpful in determining whether the signs are similar in a way that leads to a risk of confusion. The situation is different in the case of graphic signs. When analyzing case law (EUIPO and European courts), one can get an impression that the assessment of the similarity of these marks is more subjective. It is heavily influenced by other circumstances taken into account in the assessment of the risk of confusion, above all the similarity of the goods which the compared marks are to designate. The situation is even more difficult when the graphic trademarks are somehow descriptive in relation to the goods and services they cover.
A good illustration of the problem is the judgment issued in the case in which the graphic trademarks presented in the table were in conflict.
Both signs were meant to designate identical or very similar services mainly related to waste and recycling (classes 35, 40, 42). The person entitled to the earlier mark filed an opposition against the application for a later trademark due to a risk of confusion. The Opposition Division of the EUIPO considered that there was no risk of confusion in the case due to the lack of similarity between the signs. The Board of Appeal considered, however, that the marks are similar due to the similarity of the figurative elements, i.e. the similar shape of the bottle and arrow pointing to the left, and that the identity or similarity of the goods and services for which the marks were applied should be taken into account. Consequently, the decision of the Opposition Division was revoked and the case was remitted. The decision of the Board of Appeal was appealed to the General Court.
The Court ruled that the trademarks should be considered similar, and that the similarity is at an average (not low) level. The similarity, assessed on the graphic and conceptual level, cannot be ruled out by the low level of distinctiveness of the elements of common signs, i.e. bottles and arrows, which are typical for services covered by the compared marks. In the Court’s opinion, the differences between the signs will be blurred due to one of the principles of the assessment of the risk of confusion, i.e. the test of the imperfect memory of an average client. Also, the risk of confusion is not excluded by the fact that the services covered by the application of the later trademark are also addressed to professional recipients, who are characterized by a higher level of attention.
The decision is certainly controversial. It seems that it was much influenced by the identity of the services covered by both trademarks and a conviction that in such a situation the signs should not co-exist in the course of trade, even if both have a low degree of distinctiveness. The signs compared certainly raise certain associations, and are somehow graphically similar and carry similar content. The question is, is this a similarity that should be considered as leading to a risk of confusion?
In both trademarks, elements with low distinctiveness or even descriptive in relation to the services applied for were used, so the signs should benefit from a narrow scope of protection. In addition, the earlier mark consists of an additional image of a can, which cannot be considered irrelevant, if only because it creates a compositional whole with the bottle.
Interestingly, in confirming its conclusions, the Court indicated cases that cannot be considered adequate to the case under consideration. The Court recalled the judgment of 18 September 2014 in Polo / Lauren case (reference number T 265/13), where the opposition was based on infringement of the rights to a reputed trade mark and not similarity leading to the risk of confusion, so a similarity of a lower level was sufficient to establish the collision.
Similar difficulties in assessing the similarity of graphic signs were encountered by Polish courts in cases of violation of the graphic BP mark.
In both cases, the court of first instance found that the trademark of third parties used to mark gas stations, i.e. goods and services identical to the registered BP mark, are similar to the BP trademark. The court considered that, despite clear graphic differences, it should be concluded that the marks could be misleading.
It seems that in these cases the decisions were dictated more by the overall assessment of the risk of confusion and the principle of fairness than the actual similarity of the signs. It should be emphasized that the judgments in both cases were based on the prerequisite of the risk of confusion, and not an infringement of a reputed trademark. If the assessment had been based on the latter prerequisite, the decisions would not raise any doubts due to the lower degree of similarity required to establish an infringement of the reputed marks.
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