January 14, 2019
In December 2014, the applicant, Shenzhen Jiayz Photo Industrial Ltd, filed an application for registration of a EU trade mark for the following figurative sign:
The goods in respect of which registration was sought were in Class 9 covering: “Optical lenses; bags adapted for carrying photographic apparatus”.
In March 2015, Seven SpA filed a notice of opposition based on an international registration designating the EU for goods in Class 9 covering: “Optical apparatus and instruments, eyeglasses, sunglasses, spectacles, frames, goggles for sports; cases for photographic apparatus, for glasses”, as follows:
Seven SpA relied on Article 8(1)(b) of the EU Trade Mark Regulation (207/2009/EC) (the ‘likelihood of confusion’ ground) as the basis for its opposition.
In June 2016, the Opposition Division rejected the opposition for all the goods concerned. Seven SpA appealed and the First Board of Appeal upheld the appeal, finding that, given the similarities between the marks and the identity of the goods concerned, there was a likelihood of confusion, in particular for English-speaking consumers, even where they displayed a high level of attention for goods in the optics sector.
Shenzhen appealed to the General Court.
It was not in dispute that the BoA had been correct to find that the goods in question were identical.
Shenzhen argued that the BoA had not correctly assessed the level of attention of the relevant public in relation to each of the goods in question. It argued that the level of attention of the consumer was above average. For example, optical lenses used in cameras with interchangeable optical lenses were products whose purchase was infrequent and required a high level of attention, even by the average consumer, who needed the assistance of an expert, it said.
The GC disagreed, finding that the BoA had been correct to find that goods concerned were purchased not only by professionals but also by the general public, which had an interest in photography, so that its level of attention was average. Shenzhen had not put forward any evidence to show that consumers were particularly attentive when purchasing the goods concerned.
Distinctive and dominant elements of the earlier mark
Shenzhen argued that, given that the word “seven” was a number, it had a very weak distinctive character, as confirmed by the large number of marks registered across the EU comprising that number.
The GC disagreed, finding that that Shenzhen had not provided sufficient evidence to support its assertions. In the GC’s view, the word “seven” had a normal level of distinctiveness in relation to goods in the optic sector.
The GC found that the figurative elements of Seven SpA’s mark, i.e. the slightly stylised font and the small black star, were limited to an unoriginal font and a small decorative element only, which, because of their essentially ornamental function, were of less importance than the word “seven”. It was the word “seven” that would attract more attention from the relevant public and would be more easily remembered by it.
However, it could not be said that the number “7” only contributed marginally to the overall impression created by the earlier mark. The GC noted that, according to case law, the consumer generally pays greater attention to the beginning of a mark than to the end and a word placed at the beginning of a sign is likely to have a greater impact than the rest of the sign. Given the position of the number “7” in the earlier mark, it played a significant role in the overall impression and could not be disregarded.
It followed that the two elements “7” and “seven” had an independent distinctive role within the earlier mark, neither of them being dominant in the overall impression created. Both should therefore be taken into consideration when comparing the marks.
Here, the GC said that the fact that the marks shared the word element “seven” was an indication of their visual similarity. However, it said, the marks differed in several respects. First, the fonts were very different from one another. Secondly, whilst Shenzhen’s mark was in capital letters, the earlier mark was in lower-case, except, perhaps, the letter “s”, which was slightly larger than the other letters. Thirdly, Shenzhen’s mark did not include the number “7”. However, it did include the letter “n”, which was much more stylised than the “n” in the earlier mark, and the ending “oak”, which did not appear in the earlier mark at all.
The GC said that, although consumers would probably not perceive all of the differences, since they do not make direct comparisons between the marks and can only rely on the imperfect picture of them that that they have retained, the overall visual impression of the two marks was nevertheless “very different”.
Therefore, the GC said, the BoA had erred in finding that there was a certain degree of visual similarity between the marks at issue. In the GC’s view, the marks were visually dissimilar.
Here, the GC said that whilst the number “7” was clearly perceptible in the earlier mark and it played a significant role in the overall impression it produced, it did not follow that English-speaking consumers would pronounce the word element “seven” separately. In other words, consumers would pronounce the word “seven” only once.
Therefore, the GC said, since the word element “seven”, which was pronounced identically in both signs, was common to both marks, there was a certain phonetic similarity between them that was not offset by the presence of the letters “o”, “a” and “k” at the end of Shenzhen’s mark.
The GC found that the word element “seven” in the earlier mark referred to the concept of the number 7. Therefore, from a conceptual point of view, both marks shared the semantic content of the word element “seven”. That similarity was not cancelled out by the presence of the word “oak” in Shenzhen’s mark, because although “oak” would be understood as referring to a type of tree, the term “sevenoak”, considered as a whole, did not convey any meaning that could be grasped immediately and without further clarification.
Shenzhen said that its mark referred to the concept of seven trees or seven oak trees. However, the GC said, the mark contained grammatical errors, as there was no space between the two elements and no letter “s” to mark it as plural. Those errors created a discontinuity between the words “seven” and “oak” and made it unlikely that consumers would understand the concept as Shenzhen argued.
Therefore, the GC agreed with the BoA that there was some degree of conceptual similarity between the marks.
The GC concluded that the visual aspect of the marks played a greater role in the assessment of their similarity, given that the goods would be purchased in specialised shops, supermarkets and on the internet, meaning that consumers would need to rely on the visual representation of the marks when considering a purchase. The differences in the respective visual perception of the marks therefore outweighed the phonetic and conceptual similarities, meaning that the relevant public would not have the impression that the marks were similar.
Likelihood of confusion
Here, the GC noted that, under the principle of interdependence, differences in the comparison of the marks were offset by the identity of the goods in question. However, the likelihood of confusion presupposed both that the mark applied for and the earlier mark were identical or similar, and that the goods or services in question were identical or similar. Those conditions were cumulative, it said.
In the absence of a minimum degree of visual, conceptual or phonetic similarity between the marks, the principle of interdependence did not apply in the overall assessment of the likelihood of confusion. Accordingly, here, there could be no likelihood of confusion.
If the marks were in fact visually, conceptually or phonetically similar to a low degree, given the predominance of the visual aspect and the very many differences between them, there could only ever be a very low degree of overall similarity, the GC said. Further, the differentiating elements between the marks meant that the relevant public would not be misled as to the commercial origin of the goods. Therefore, the identity between the goods would be offset by a very low degree of similarity between the signs.
The GC concluded that the BoA’s decision should be annulled. (Case T-339/17 Shenzhen Jiayz Photo Industrial Ltd v EUIPO EU:T:2018:815 (21 November 2018) — to read the judgment in full, go to the curia search form, type in the case number and follow the link).