The matter at hand
Loutfi invoked its Community trade marks for the word/figurative signs ‘EL BENNA’ and ‘EL BNINA’ in both Arabic and Latin script against the use of the word/figurative sign ‘EL BAINA’ in both Arabic and Latin script by Halalsupply. The referring court in Brussels observed that the goods marketed by both Loutfi and Halalsupply are ‘halal’ products and are consequently mainly intended for a Muslim public. It moreover established that, while the marks on the one hand and the sign on the other present a certain visual similarity, the signs in Arabic mean ‘taste’, ‘softness’ and ‘sight’ respectively.
The referring court asked, in short, whether Article 9(1)(b) of the Trade Mark Regulation must be interpreted as meaning that, in circumstances where the relevant public for the trade marks concerned has a basic understanding of written Arabic, the meaning and the pronunciation of those words may or must be taken into account.
The judgment of the ECJ
The ECJ first refers to the factual findings of the referring court, where it was established that “the relevant public […] have at least a basic knowledge of written Arabic” (paragraph 22). It then refers to its existing case law where it is stipulated that the assessment of the likelihood of confusion “includes a visual, aural or conceptual comparison of the signs at issue, bearing in mind, in particular, their distinctive and dominant components” (paragraph 23).
Based on these considerations, the ECJ concludes that “in circumstances where the relevant public for the Community mark and for the sign at issue has a basic knowledge of written Arabic, the meaning and pronunciation of those words must be taken into account” (paragraph 26).