the matter at hand

In 2014, the China Construction Bank Corp. (“CCB”) applied to register the figurative mark ‘CCB’, for services in class 36 for, inter alia, financing services. The Groupement des cartes bancaires filed an opposition to registration of the mark. The opposition was based on prior rights, including the figurative mark ‘CB’. The grounds relied on were those set out in Article 8(1)(b) and (5) of the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark.

Both the Opposition Division of EUIPO and the First Board of Appeal considered that there was a likelihood of confusion. The First Board of Appeal of EUIPO considered that, as a result of the use of the earlier mark, the relevant French public identifies that mark as referring to ‘CB’ cards, taking into account that had been previously established by the Fourth Board of Appeal of EUIPO that the word mark CB enjoys a reputation in France for services in Class 36. Having regard to the identity of the services designated by the signs at issue, the similarity of those signs and the reputation of the earlier mark in France, the differences between the signs at issue and the above-average level of attention of the relevant public were not considered sufficient to rule out the likelihood of confusion.

The action brought before the General Court  was dismissed. The General Court held that the reputation and high level of distinctive character of a mark may be relevant to the identification of the dominant element in the overall impression made by that mark. It concluded that the Board of Appeal was therefor entitled to take into account mainly of that component of the earlier mark when comparing the signs at issue.

By its appeals, CCB alleges that 1) the General Court erred in law in its assessment of the existence of a likelihood of confusion by taking into account the reputation and distinctive character of the earlier mark, in its assessment of the similarity of the signs at issue and 2) failed to state the grounds for its finding that the earlier mark has a reputation in relation to financial, monetary and banking matters.

the judgment of the ecj

The ECJ holds, with reference the settled case law that the existence of a risk of likelihood of confusion, within the meaning of Article 8(1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, “must be assessed globally, taking into account all factors relevant to the particular case” (paragraph 54). “Those factors include, inter alia, the degree of similarity between the signs at issue and the goods or services in question and also the strength of the earlier mark’s reputation and its degree of distinctive character, whether inherent or acquired through use” (paragraph 55).

The ECJ refers to Equivalenza Manufactory (C-328/18) and recalls that the examination of the similarity of the signs at issue “consists of a visual, phonetic and conceptual comparison based on the overall impression which those signs make, having regard to their intrinsic qualities, on the memory of the relevant public”. Whereas, “the distinctive character of the earlier mark concerns the ability of that mark to identify the goods or services in respect of which it was registered as coming from a particular undertaking and thus to distinguish those goods or services from those of other undertakings” (paragraph 56).

The ECJ explains that, unlike the factor of the similarity of the signs at issue, the factor of the reputation and distinctive character of the earlier mark does not involve a comparison between a number of signs, but concerns only the earlier mark. “Even where the earlier mark has a high degree of distinctive character by reason of its reputation, that fact does not make it possible to determine whether and, if so, to what extent that mark is visually, phonetically and conceptually similar to the mark in respect of which registration is sought.”  The ECJ concludes that it is therefore incorrect in law to assess the similarity of signs in the light of the reputation of the earlier mark (paragraph 58).

Although the identification of the dominant element of a sign may be relevant for the purpose of comparing signs at issue, according to the ECJ, “it does not follow that the reputation and the degree of distinctive character of that sign, which concern it as a whole, make it possible to determine which component of that sign is dominant in the perception of the relevant public”. “Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark cannot be understood as meaning that the reputation or the high level of distinctive character of a trade mark may lead to a finding that one of its constituent elements dominates over another of its elements for the purposes of assessing the similarity of signs at issue” (paragraph 61 and 62).

The ECJ therefore concludes that the General Court erred in law by holding that the First Board of Appeal of EUIPO was entitled to infer from the reputation and highly distinctive character of the earlier mark that it would be perceived as being the word element CB, that that word element was therefore dominant and that it must, in turn, dominate the assessment of the similarity of the signs at issue.

With reference to the second ground of appeal, the ECJ holds that “the statement of the reasons on which a judgment of the General Court is based must clearly and unequivocally disclose the General Court’s reasoning, so that the persons concerned can be apprised of the justification for the decision taken and the Court of Justice can exercise its ower of review.” And “Where the reasoning of the General Court is contradictory of inadequate, that raise a question of law which is amenable to judicial review.”

The ECJ concludes that the General court failed to examine the distinctive character of the earlier mark for services relating to ‘financial affairs’, ‘monetary affairs’ and ‘banking’, but simply referred to the reputation enjoyed by the earlier mark in a specific subcategory. CCB submitted correctly that the existence of the earlier mark’s highly distinctive character for services relating to bank card payments, does not explain in any way why the earlier mark has in general, a highly distinctive character in the field of financial, monetary and banking services designated by that mark (paragraph 69 through 71).As this defect in the statement of reasons also vitiates the overall assessment of likelihood of confusion, this ground of appeal is upheld by the ECJ (paragraph 68 to 77).