In a recent appeal decision by the ECJ, an EU General Court decision was upheld in respect of the word mark Chempioil and an earlier figurative mark Champion.
Decision of the EU General Court
In June 2016, the EU General Court heard an appeal made to dismiss an opposition, a decision originally determined by the EU Intellectual Property Office (EUIPO). The EU General Court upheld the EUIPO's decision that there was no likelihood of confusion between the applicant's word mark CHEMPIOIL and the opponents figurative mark CHAMPION where both marks were filed in relation to identical and similar goods.
It was the opponent's position that the marks are visually and aurally similar which in turn would lead to confusion by the public. The EC General Court considered the similarity of the marks and although the similarities in respect of word length were taken into account, the conceptual difference between the two marks was considerable. The EC General Court considered recognition and understanding of the word "champion" and found it to be widely understood in most EU member states with similar local language variants used. In contract, the word "chempioil" had no specific meaning and was not associated as a variation of the word "champion". It was found that the clear conceptual differences between the two marks counteracted the identified similarities and the EUIPO's decision to dismiss the opposition was upheld.
Appeal
The proprietor of the figurative CHAMPION mark appealed the decision of the EC General Court and alleged an infringement of Article 8(1)(b) of the EUTM Regulation (207/2009/EC).
Article 8(1) provides:
- 1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:
- b. if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
The allegation of infringement, in respect of the EU General Court's decision, was made on the basis that the EC General Court had held that neutralisation of the aural and visual similarities by the conceptual differences could only be excluded if the two respective marks had a clear and specific meaning. It was further alleged that the EC General Court had failed to balance the marks' conceptual differences with their aural and visual similarities.
The ECJ considered the appeal, however, rejected the arguments put forward. The ECJ upheld the two previous decisions made in respect of the two marks namely that there exists no likelihood of confusion between them. The ECJ held that the EC General Court had applied the law correctly and an overall assessment of the similarities and differences between the word mark CHEMPIOIL and figurative mark CHAMPION had been made, with particular, and correct, consideration given to the clear and specific meaning of "champion" and different meaning associated with "chempioil".
This case highlights the considered approach taken by the European Courts in determining a likelihood of confusion between two trade marks and how the specific meaning associated with a mark can be instrumental in how such decisions are reached.
If you would like any further information on this issue, or have any concerns regarding trade marks or infringement, then please contact Blake Morgan's Intellectual Property Team.
