Two cases on conflicting marks discussed at the European Union General Court EUGC
Between December 2020 and January 2021 the General Court issued two interesting decisions about the results of the assessment of the likelihood of confusion between trademarks and signs.
The two decisions are i) that of 9 December 2020 (case T-190/20) by which the General Court confirmed that there is likelihood of confusion between the earlier trademark “MEA” and the sign “ALMEA” and (ii) the decision of 20 January 2021 (case T-328/17) by which the General ruled that there is no likelihood of confusion between the earlier trademark “HALLOUMI” and the sign “BBQLOUMI”.
How is it possible? The marks in conflict in the two cases “MEA/ALMEA” and “HALLOUMI/BBQLOUMI” are quite similar or dissimilar in a similar way, since the difference concerns only the initial group of letters: “AL” and “HAL – Vs. BBQ”, however the findings of the General Court are opposite.
A. THE BASIC PRINCIPLES
Indeed the reasonings of the decisions are persuasive and they fully comply with the basic principles applicable to the assessment of the likelihood of confusion, according to which. “The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details” and “A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa”.
Namely in the case Almea Vs. Mea, the GC found that the signs are confusingly similar and confirmed the decision of the Second Board of Appeal of EUIPO, which upheld the opposition to the registration of the sign Mea, taking into account that:
- both refer to products under classes no. 3 (3 (face and body masks, cosmetics, and body oil) and 5 (veterinary preparations, sanitary preparations for medical purposes, food for babies, and plasters) of Nice Classification. So, there is identity between the goods;
- the “MEA” trademark was completely included in “Almea” sign and made up three fifths of the sign. In this respect, the GC pointed out that it is true that the first component of word marks may be more likely to catch the consumer’s attention than the components which follow; however, the additional letters “a” and “l” in the first part of “Almea” do not prevent consumers from perceiving the common element ‘mea’ and do not attract the attention of the relevant public more than the element “mea” which follows. In essence, the differences do not prevent the relevant public from perceiving a certain degree of visual and phonetic similarity between the signs since they have in common the element “mea”;
- it is not necessary that the signs are conceptually similar in order to establish that there is an overall similarity between them, considering that “MEA” has no meaning in relation to the goods for which it has been registered;
- the average level of inherent distinctiveness of the earlier mark and the principle that consumers must rely on an imperfect recollection of the marks.
The application of the basic principles of the assessment of likelihood of confusion brought GC to opposite findings in the case“HALLOUMI/BBQLOUMI”:
- the trademark “HALLOUMI” was registered for “cheese”, while the registration of “BBQLOUMI” was sought for “Dairy products and dairy substitutes; cheese; processed cheese; cheese products; cheese dips; meat extracts; prepared dishes consisting wholly or substantially wholly of meat or dairy products’ Sandwiches; crackers flavoured with cheese; condiments; sauces; cheese sauce; foodstuffs made from cereals; Restaurant services; fast food restaurant services; cafeterias; catering”.
- more weight must be given to its initial part of the signs “HAL”/ “BBQ” than to the final part “LOUMI.
- the distinctiveness of “HALLOUMI” mark is low, since such term designates a particular type of cheese produced in Cyprus and is used throughout EU as a generic name for such a cheese;
- the element “loumi” contributes very little to the distinctiveness of the “BBQLOUMI” sign, while the element “bbq” catches the relevant public’s attention owing to its position in the foreground of that element. So, despite the similarity from a conceptual and aural stand point, considering the fact that the earlier mark enjoys only a weak degree of inherent distinctiveness, the difference consisting in the first part (“HAL”/”BBQ”) is sufficient to avoid that relevant public is likely to be misled as to the commercial origin of the goods.
The cases at hand demonstrate, once again, that the assessment of the likelihood of confusion must be performed on a case by case basis, taking into account any relevant aspect concerning the signs, the goods/service and the relevant public.
In other words, even two different assessments concerning the same signs may lead to different outcomes where the relevant products vary.
So, hypothetically, if the mark “HALLOUMI” was not registered for cheese but for other products, the conclusions of the GC concerning the likelihood of confusion with the “BBQLOUMI” might have been different.