The matter at hand
Well over ten years ago, Groupe Léa Nature sought to register an EU figurative mark containing the word element ‘SOBioetic’ for inter alia ‘bleaching preparations and other substances for laundry use’ and a range of cosmetics and skincare products. The registration was opposed by Debonair on the basis of its EU and national word mark ‘SO…?’ for ‘perfume, eau de toilette, fragrances, body lotion, body spray and lipsticks’.
The Opposition Division rejected the opposition, but this decision was annulled by the First Board of Appeal, after which the General Court, however, annulled the Board of Appeal’s decision, and the ECJ, in turn, set that decision aside by judgment of 27 October 2016 (C-537/14 P) and referred the case back to the General Court, which then awarded the opposition. In short, the General Court held that the goods were partly identical or similar and that the similarity between the signs at issue was such that there existed a likelihood of confusion in relation to those identical and similar goods. With regard to the ‘bleaching preparations and other substances for laundry use’, which were not considered similar to the goods covered by the earlier mark, the General Court held that there was a risk that the sale thereof would be detrimental to the reputation of the earlier mark within the meaning of Article 8(5) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, because the negative connection with health risks associated with some bleaching and cleaning products may tarnish the reputation of the earlier mark for cosmetics.
Before the ECJ, Groupe Léa Nature raised every ground it could think of, ranging from an incorrect assessment of the relevant public, the similarity of the signs, the distinctive character of the earlier mark and the likelihood of confusion, to failure to apply the necessary criteria in order to assess the earlier mark’s reputation and whether the public will establish a link between the marks at issue, as well as failure to give reasons for finding that there was a risk of a detrimental effect on the reputation of the earlier mark.
The Judgment of the ECJ
The ECJ dismisses the appeal in its entirety, for a large part because the arguments in support of the appeal had been put forward for the first time before the ECJ, relied on a misreading of the judgment, concerned assessments of the facts and evidence not subject to review by the ECJ or unsuccessfully alleged a failure to state reasons.
As to the assessment of the similarity of the signs at issue, the ECJ holds that it was not necessary for the General Court to consider that the word element ‘SO’, which the signs have in common, was the dominant element of those signs in order to reach the conclusion that they were similar. Citing Medion (C-120/04), the ECJ recalls that “the finding that there is a likelihood of confusion cannot be subject to a condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark” (paragraph 47). Therefore, the finding of the General Court that the elements ‘so’ and ‘bio’ were of equivalent importance in the overall impression of the sign, did not preclude it from finding that there was a likelihood of confusion. The ECJ rules that this applies equally under Article 8(5) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, as the concept of similarity in Article 8(5) is no different from the concept of similarity in Article 8(1)(b) of that regulation. Therefore, if two signs are similar within the meaning of Article 8(1)(b), they are also similar for the purpose of Article 8(5) (paragraphs 79-81).
With regard to the other criteria for the assessmentunderArticle 8(5), the ECJ holds that the General Court correctly carried out a global assessment of all the relevant factors in order to assess whether the mark applied for would be unduly detrimental to the positive image conveyed by the earlier mark, and sufficiently stated its reasons for its conclusion “that the conflicting nature of the goods covered by the marks at issue made it possible to hold that there was a ‘risk of tarnishment’ of the image associated with the earlier mark”, in that “there was a risk that the relevant public would make a negative connection with the earlier mark which had a reputation for cosmetics, and the risks to health associated with some bleaching and cleaning products” (paragraph 87).