The matter at hand
The Lithuanian company SCT Lubricants obtained an international registration for the word mark CHEMPIOIL designating the European Union. Wolf Oil, established in Belgium, filed a notice of opposition against this registration, based on, inter alia, its international registration designating the European Union and France for the figurative mark CHAMPION.
The Opposition Division partially upheld the opposition after which SCT Lubricants successfully appealed that decision before the Fifth Board of Appeal. The Board of Appeal found, in essence, that there was no likelihood of confusion between the marks at issue, because the word 'champion' will be understood by most EU consumers, whereas the term ‘chempioil’ will not be associated with any concept, except perhaps that of oil. The Board of Appeal found that consequently, despite their visual and phonetic similarities, the relevant public will draw a distinction between the marks. Wolf Oil brought an action for the annulment of this decision before the General Court, which dismissed the action. Wolf Oil subsequently lodged an appeal before the ECJ.
The judgment of the ECJ
According to Wolf Oil, the General Court misinterpreted the case-law on the neutralisation of visual and phonetic similarities by conceptual differences. The ECJ recalls that it follows from its case-law, including Picasso v Picaro (C-361/04), that “the conceptual differences between two signs at issue may counteract their visual and phonetic similarities, provided that at least one of those signs has a clear and specific meaning for the relevant public, with the result that that public is capable of grasping it immediately” (paragraph 42). The ECJ holds that in that regard “[a] distinction should be made between the assessment of the conceptual differences between the signs at issue and the overall assessment of their similarities, which form two distinct stages in the analysis of the overall likelihood of confusion, the first being a prerequisite for the second” (paragraph 45). The ECJ rules that the General Court correctly did so, by establishing, first, that the signs at issue were conceptually different and, second, that the word ‘champion’ had a clear and specific meaning, whereas the term ‘chempioil’ did not. On this basis, the General Court was entitled to conclude that the conditions for the neutralisation of visual and phonetic similarities were satisfied.
The ECJ adds that the General Court was not required to take account of the marketing channels and the marketing conditions for the goods in question for the purposes of the global assessment of similarities. “They may, in fact, vary over time and according to the will of the holders of the trade marks at issue. Consequently, those elements are not appropriate for the purpose of assessing the similarities between the signs” (paragraph 56).