Insufficient evidence of coexistence which could prevent a likelihood of confusion

C-412/16 P

Ice Mountain Ibiza v EUIPO

Trade marks: Scope of protection

01 Mar 2018

The matter at hand

On 2 February 2013, Ice Mountain Ibiza sought to register an EU figurative mark with the word elements ‘ocean beach club ibiza’ for services in class 41 (‘entertainment, notably discotheques and night clubs’). The application was opposed by Marbella Atlantic, proprietor of the earlier Spanish figurative mark with the word elements ‘ocean club ibiza’, also registered for services in class 41 (centred on sporting activities, notably for gyms).

The opposition was upheld by the opposition division of EUIPO, as well in the subsequent appeals before the First Board of Appeal and the General Court, all finding a risk of confusion due to the similarities of the signs and services at issue.

Before the ECJ, Ice Mountain Ibiza relied on four pleas in law, arguing, first, that assessment of the distinctiveness of the element ‘ocean’ had been done incorrectly, insofar that it was considered not to be descriptive of the services the earlier mark was registered for. Secondly, it held that various figurative elements were incorrectly assessed in terms of their dominant character, due to the General Court assuming that word elements are in principle more important than figurative elements. Thirdly, the General Court would have ignored relevant case law in its assessment of the similarity of the sings. Fourthly, the General Court supposedly erred in concluding that there was a likelihood of confusion, by not taking into account the peaceful coexistence that allegedly existed and which evidenced the lack of a likelihood of confusion.

The judgment of the ECJ

With regard to the first plea, the ECJ states that the General Court correctly considered that the element ‘ocean’ is not descriptive of the services of class 41. The sea is, according to the ECJ, not a necessary characteristic of these services and does not evoke an association therewith.

On the second plea, the ECJ rules that the General Court did not assume that word elements are in principle more important than figurative elements, but rather (rightfully) concluded that the word elements, based on their position and dimensions within the mark, were at least as dominant as the figurative elements. The ECJ adds that while position and dimension are criteria to be considered in assessing the dominant character of an element, they are not the only decisive criteria in such an assessment.

The ECJ dismisses the third plea as inadmissible, since it only relates to a mere factual assessment by the General Court. As to the final plea, the ECJ finds that the General Court did consider the argument on coexistence, but rightly concluded that the applicant had not brought forward sufficient evidence thereof.

In this regard, the General Court correctly noted that it in demonstrating the alleged coexistence, evidence of the knowledge of the relevant marks by the public was particularly relevant and that the documents produced did not prove the actual use of the marks in question, their effective knowledge by the public or that the alleged coexistence was based on the absence of a likelihood of confusion. Moreover, the General Court did not apply the relevant case law incorrectly by considering that the web pages referred to by the applicant did not attest to the actual knowledge of the marks at issue by the public, on the ground that they did not give information as to the occupancy rate, the turnover or the advertising budget.

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