Marketing circumstances are irrelevant for assessment of similarity and neutralization of similarity only in exceptional cases

C-328/18 P

EUIPO v Equivalenza Manufactory

Trade marks: Scope of protection

04 Mar 2020

The matter at hand

ITM filed an opposition against the registration of figurative mark BLACK LABEL BY EQUIVALENZA, applied for the same goods and services (parfums, class 3) as its earlier figurative mark LABELL. The Board of Appeal of the EUIPO upheld the opposition on the grounds that there was a likelihood of confusion on the part of the public.

The General Court annulled this decision and dismissed the opposition. The General Court noted that the signs at issue produced a different overall impression visually, that there was an average degree of phonetic similarity and that there was a conceptual difference between them resulting from the presence of the word ‘black’ and the element ‘by equivalenza’. Due to the visual and conceptual differences the General Court held that the signs were not similar for the purpose 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.

The applicant filed an appeal against this judgment before the ECJ.

The judgment of the ECJ

The ECJ first references that the General Court had held that the signs were, at the very least, similar to a low degree. However, and in spite of these established similarities, the General Court concluded that the overall visual impression was different. In the ECJ’s view, this entailed a contradictory reasoning: in spite of the visual similarity, the General Court excluded any visual similarity between them. By ruling out any visual similarity, the General Court vitiated its assessment by contradictory reasoning (paragraph 28).

Second, the ECJ holds that the General Court did not perform the similarity test in a correct manner, by taking into account at that stage the circumstances in which the goods were marketed (paragraph 73). To reach this conclusion, the ECJ first reiterates its earlier findings that, in order to asses the degree of similarity between the signs at issue, it is necessary to determine the degree of visual, phonetic or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, taking account of the category of goods or services in question and the circumstances in which they are marketed. The ECJ adds that, “although the marketing circumstances are to be taken into account at the stage of the global assessment of the likelihood of confusion”, they should not be taken into account at the stage “of the assessment of the similarity of the signs at issue” (paragraph 70).

The ECJ then goes on to address the topic of neutralization, by referencing that “at the stage of the assessment of the similarity of the signs as a whole, their conceptual dissimilarity [may] counteract phonetic and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately” (paragraph 74). The ECJ however continues by noting that “that consideration is intrinsically linked to the exceptional case in which at least one of the signs at issue has, from the perspective of the relevant public, a clear and specific meaning which can be grasped immediately by that public” (paragraph  75). In the absence of such a clear and specific meaning, the normal assessment of likelihood of confusion is to be conducted (paragraph 76).

Neem contact met ons op.