July 14, 2021
In May 2018, the applicants, Ms Isaline Grangé and Ms Alizée Van Strydonck, applied to register the word mark ÂME as an EU trade mark in Class 18 (including “Leather and imitation leather; handbags; wallets”) and Class 25 (including “Clothing, footwear, headgear”).
Nema Srl opposed the application on the grounds that the application mark was confusingly similar under Article 8(1)(b) of the Trade Mark Regulation (2017/1001/EU) to its international registration designating the EU for the following figurative mark, registered in Classes 18 and 25:
The Opposition Division rejected the opposition on the ground that there was no likelihood of confusion. Nema appealed and the Fourth Board of Appeal annulled the earlier decision, finding that the goods were identical and that there was a likelihood of confusion amongst the relevant public, being the German-, Slovak- and Czech-speaking public, resulting from the average degree of visual and phonetic similarities between the marks. Conceptually, the BoA found that the application mark had no meaning for the relevant public. As for the earlier mark, it said that it would be perceived by the relevant public as the word “Amen” and that unless it was integrated into religious text, such as a prayer, it did not convey any concept or meaning. It also said that the concept was abstract to such a degree that it was liable to escape the attention of the consumer. Therefore, it said that it was not possible to carry out a conceptual comparison and, as a result, the conceptual aspect had no bearing on the similarity of the marks. The applicants appealed to the General Court, alleging infringement by the BoA of Article 8(1)(b).
The applicants did not challenge the BoA’s findings on the relevant public or on the goods being identical. They did, however, dispute the BoA’s assessments of the visual, phonetic and conceptual similarity of the marks.
The GC upheld the BoA’s findings on visual similarity. It said that the BoA was entitled to find that the marks were at least partially identical in respect of one or more relevant aspects since they had three of the four letters in common and were distinguished by only one additional letter, i.e. the letter “n”, at the end of the earlier mark. The visual difference resulting from one letter was slight and not such as to counteract the similarity resulting from the identity of three of the four letters.
The BoA was also entitled to find that the visual perception of the marks was almost entirely determined by the letters of which they were composed, the additional graphic elements having only a limited impact on the perception of the relevant public. The GC noted that, as a rule, the word elements of a mark are considered more distinctive than its figurative elements since the average consumer will refer to the goods in question by citing the name, rather than describing the figurative element, of a mark.
That said, the BoA had not disregarded the graphic elements. For example, it had noted the circumflex accent and found (correctly, in the GC’s view) that it would pass unnoticed by the relevant public, given that the French word “âme” has no meaning to the German-, Slovak- and Czech-speaking public.
The GC also upheld the BoA’s findings on phonetic similarity. It said that while it was true that a French-speaking public would pronounce the word “âme” as a single syllable, that did not apply to the relevant public, who would pronounce it as two syllables.
However, the GC found that the BoA had been wrong to conclude that the conceptual similarity between the marks was neutral. In particular, the BoA had erred in finding that the semantic content of the word “Amen”, defined as “so be it!” in the Collins English dictionary, was a term understood only at the end of a prayer or religious statement. In the GC’s view, the word did not necessarily have to be used solely in a religious context in order for it to be grasped directly by the relevant public. On the contrary, even outside of that context, the word “Amen” had a clear and specific meaning which would be easily understood by the relevant public. In fact, this finding was supported by earlier EUIPO decisions.
Overall, the GC said that the BoA had erred in finding that it was not possible to carry out a conceptual comparison because the marks did not convey any clear concept capable of being grasped directly and immediately by the average consumer. Since only one of the marks evoked a concept, the GC found that they were not conceptually similar.
The GC pointed out that, according to case law, the global assessment of the similarity of the marks implies that conceptual differences can counteract phonetic and visual similarities, provided that at least one of the marks has a clear and specific meaning for the relevant public, such that the public is capable of grasping it immediately. This did not mean, however, that the existence of conceptual differences automatically led to the counteraction of visual and phonetic similarities.
EUIPO referred to authorities showing that where the concept conveyed by the earlier mark is relatively abstract, to such an extent that it is liable to escape the attention of the consumer, any difference in meaning between the marks cannot prevail where they have visual and phonetic similarities. The GC said that these cases did not apply to this case as the word “Amen” was not abstract and had a universally understood meaning. Therefore, it would not escape the consumer’s attention.
In another authority cited by EUIPO, the court had found that although there were conceptual differences between the marks, they were not sufficient to counteract the particularly high degree of visual and phonetic similarity. The GC said that did not apply to this case as there was only an average degree of visual and phonetic similarity between the marks in question.
Overall, the GC said that the BoA was correct to find that there was an average degree of visual and phonetic similarity between the marks, but had erred in finding that it was not possible to carry out a conceptual comparison and in failing to examine whether the visual and phonetic similarities were counteracted by the lack of conceptual similarity.
The likelihood of confusion
Given the BoA’s errors in relation to conceptual similarity, the GC said that its assessment of the likelihood of confusion was necessarily vitiated by errors. If it had correctly examined conceptual similarity and if it had not erroneously refused to examine the counteraction of visual and phonetic similarities through conceptual differences, it should have found that there was no likelihood of confusion.
Accordingly, the GC upheld the appeal and annulled the BoA’s decision. (Case T-442/20 Isaline Grangé and Alizée Van Strydonck v EUIPO EU:T:2021:237 (5 May 2021) — to read the judgment in full, click here).