Dominance of word element in composite mark not required for finding of likelihood of confusion

C-162/17 P

Republic of Poland v EUIPO

Trade marks: Scope of protection

16 Jan 2019

The matter at hand

On 14 March 2013, Stock Polska, a company established in Lublin, Poland, filed an application for registration of an EU figurative mark consisting of the word element ‘Lubelska’ and a crown device for alcoholic beverages in class 33. The application was opposed by Lass & Steffen, proprietor of the earlier German word mark ‘LUBECA’, also registered for alcoholic beverages in class 33.

In the proceedings before the Opposition Division and the subsequent appeals before the Fifth Board of Appeal and the General Court, Stock Polska argued that there was a ‘radical’ conceptual difference between the signs, as ‘Lubeca’ is the Latin name of the German city of Lübeck, whereas ‘Lubelska’ either has no meaning for German consumers or will be understood as referring to the Polish city of Lublin. This argument was rejected based on the assumption that the average German consumer would not be aware of the semantic connotations of both signs. In addition, the General Court concurred with the findings of the Opposition Division and the Board of Appeal that the crown device was not liable substantially to influence the overall impression created by the mark applied for, as a crown is a figurative element commonly used in the alcoholic beverages sector and would be perceived by the consumer as purely decorative.

The Republic of Poland, supported by Stock Polska, subsequently appealed that decision, claiming that the General Court had failed to base its assessment on the overall impression of the signs at issue, by restricting its comparison of the signs to the word elements and disregarding the figurative elements (first ground of appeal). This would furthermore constitute infringement of the principles of equal treatment, sound administration and legal certainty, because the EUIPO Guidelines preclude such an approach (second ground). In addition, the Republic of Poland claimed that the General Court had distorted the facts and infringed its obligation to state reasons, by accepting as widely-known facts that the relevant consumer does not know the meaning of the name ‘Lubeca’ and that crown devices are commonly used in the alcoholic beverages sector.

The judgment of the ECJ

The ECJ holds that the first ground of appeal relies on a misreading of the judgment under appeal. According to the ECJ, it is clear that the General Court did take account of the figurative elements of the mark applied for, by considering that these were, for various reasons, not liable to exercise a significant influence on the overall impression created by the mark. The second ground of appeal relies on the same misreading and is therefore dismissed as well. Moreover, the ECJ recalls that “it is settled case-law that the EUIPO guidelines are not binding legal acts for the purpose of interpreting provisions of EU law” (paragraph 59) and that “although EUIPO must take into account decisions already taken and consider with especial care whether it should decide in the same way or not, (…) the examination of any trade mark application be stringent and full and be undertaken in each individual case” (paragraph 60).

As to the third ground of appeal, the ECJ first of all recalls that it is settled case law that “the finding, by the General Court, as to whether facts on which the Board of Appeal of EUIPO based its decision are well known or not is a factual assessment which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal” (paragraph 69). The ECJ rules there is no such distortion here, considering that “a distortion must be obvious from the documents on the Court’s file without there being any need to carry out a new assessment of the facts and evidence” (paragraph 70) and that the Republic of Poland had failed to indicate precisely which evidence had been distorted.

The fourth ground of appeal shares the same faith. As the ECJ has not found any distortion in the General Court’s assessment of the facts, the established fact that the average German consumer does not know the meaning of the word ‘Lubeca’ is deemed sufficient to support the General Court’s conclusion that the (alleged) meaning of the word ‘Lubeca’ is not sufficiently clear and precise. As regards, finally, the complaint that the General Court did not explicitly rule on the dominant character of the word element of the mark applied for, or on whether the figurative elements of that mark were negligible, the ECJ holds that it does follow “implicitly but necessarily” from the reasons given by the General Court that it considered that the figurative elements were not negligible and that the word element was not dominant.

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