App Co. Says ‘Star Wars’ Game Infringes Its Trademark Law360Full coverage
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In November 2013 the intervener before the General Court (GC), Elka Zaherieva, filed for an application for registration of an EU trade mark (EUTM) for the following figurative sign:
The application was for a trade mark for goods and services in Classes 29 (milk beverages, milk products), 30 (Frozen Yoghurt, confectionary ices), and 32 (Non-alcoholic beverages, milk, chocolate and peanut beverages) of the Nice Classification.
The application was published in January 2014 and was subsequently opposed by Şölen Çikolata Gıda Sanayi ve Ticaret (the party to the GC proceedings) pursuant to what is now Article 46 of Regulation 2017/1001 (EUTMR).
Based on what is currently Article 8(1)(b) EUTMR, the opposition claimed that the applicant’s sign conflicted with the earlier international registration for goods and services in Class 30 (Cocoa, cakes, chocolates, chocolate creams, cakes with cocoa milk and chocolate cream) of the Nice Classification:
The EUIPO Opposition Division rejected the opposition in its entirety. The decision was subsequently appealed to the Fourth Board of Appeal, which also dismissed the appeal.
The decision of the Fourth Board of Appeal
The Fourth Board of Appeal took in fact the view that the signs are visually dissimilar (notwithstanding the word ‘cornet’), in view of the dominance of the figurative elements in the mark applied for, and in particular the element of the rabbit which constitutes a “striking feature” of the applicant’s sign. The mere fact that the word ‘bobo’ and ‘ozmo’ share the same vowel ‘o’ does not make the two marks similar. In addition, the initial element ‘ozmo’ of the earlier international registration and the initial element ‘bobo’ of the mark applied for are likely to have had more of an impact on the overall visual and phonetic impression than the final element ‘cornet’.
The General Court’s installment
The holder of the OZMO CORNET trade mark appealed the decision to the General Court (GC) on two grounds:
i) First, holding that the Fourth Board of Appeal had infringed Article 8 (1)(b) (likelihood of confusion in relation to relative grounds for refusal) EUTMR, and ii) Secondly, alleging infringement of Article 94 EUTMR, in particular breach of the duty to state reasons and breach of the duty of diligence.
The GC issued its decision (T-648/16) a few days ago.
The present analysis will only focus on the first point, i.e. the likelihood of confusion, as this appears to me the most interesting aspect of the decision.
Likelihood of confusion between BOBO CORNET and OZMO CORNET?
The holder of the earlier trade mark claimed that the Board had erred in its comparison of: (1) the goods; (2) the signs (visually, phonetically and conceptually); as well as (3) likelihood of confusion between them.
The relevant public
The GC started by noting that the goods in question are everyday consumer goods directed at the general public with an average level of attention.
Comparison of the signs
In order to assess the similarity of the goods the Court conducted a global assessment of the signs, bearing in mind their distinctive and dominant components. The average consumer normally perceives a sign as a whole, rather than in its individual components. Only if other components are negligible would the assessment of similarity be carried out solely on the basis of the dominant elements.
(1) The visual comparison
According to the holder of the earlier trade mark, the dominant element in the mark applied for consists of the terms ‘bobo’ and ‘cornet’ and not the image of the rabbit.
The Court did not accept this and found that the Fourth Board of Appeal had not erred when it found that the representation of the rabbit holding an ice cream cornet is the dominant feature. This is because that representation occupies two thirds of the mark applied for, and therefore constitutes a particularly striking feature of that sign.
Furthermore, the verbal elements ‘bobo’ and ‘cornet’ framed by a thin black line depicting a cloud in the upper left-hand corner, even though not insignificant, occupy a less prominent position than does the representation of the rabbit holding the ice cream cornet. Among those verbal elements, the initial element ‘bobo’ has a more visual impact than the final element ‘cornet’, given the larger size of its letters in relation to those of the word ‘cornet’.
Therefore, the Fourth Board of Appeal was correct in finding that the initial element ‘ozmo’ is likely to have a greater visual impact than the element ‘cornet’. The word ‘ozmo’ is written in larger letters than the word ‘cornet’ and is framed by a thin black line.
(2) The phonetic comparison
Also with regard to this point, the Fourth Board of Appeal did not err in finding that the words ‘bobo’ and ‘ozmo’ will have a greater phonetic impact amongst the relevant consumers than the word ‘cornet’. This is because the two words considered together constitute a relatively long combination and it is therefore likely that the relevant public will pronounce only the first word of each of them when purchasing the goods designated by those combinations. This is especially the case for the part of the relevant public with an understanding of the meaning of the word ‘cornet’ which will perceive that word as having a descriptive character and will therefore refrain from pronouncing it when making the relevant purchase.
Kat cornet(3) The conceptual comparison
The assessment of the degree of conceptual similarity involves consideration of the distinctive and potentially descriptive character of the common elements of the sign at issue in light of the goods or services in question.
In the present case, regard must be taken of the presence of the rabbit holding a cornet which assumes a dominant character in the mark applied for, the absence of any comparable figurative element in the earlier international registration, and the absence of any concept conveyed by the words ‘bobo’ and ‘ozmo’, respectively.
The GC observed that as for the word ‘cornet’, it is correct that the verbal element is present in the two signs. However, that word is descriptive and, as such, is a non-distinctive element. Having regard to the absence of any concept conveyed by the words ‘bobo’ and ‘ozmo’, and to the presence of a dominant figurative element in the mark applied for – the mere circumstance that that verbal element is present in the two signs at issue cannot in itself introduce even a low degree of conceptual similarity. Therefore there is no conceptual similarity.
Global assessment of the likelihood of confusion
According to settled case law, the existence of a likelihood of confusion presupposes both that the mark applied for and the earlier international registration are identical or similar. Furthermore, the goods or services that are the subject of the application for registration ought to be identical or similar to those in respect of which the earlier international registration has been registered. These conditions are also cumulative (Gateway v OHIM, C‑57/08 P).
In light of the above , the dominant character of the rabbit holding the cornet in the mark applied for, the visual and phonetic difference between the two marks in question, the words ‘bobo’ in the mark applied for and ‘ozmo’ in the earlier registered mark, and the secondary character of the word ‘cornet’ having regard to its position, size and descriptive character, the GC found that the Fourth Board of Appeal was correct in finding that there is no likelihood of confusion between the two marks. Hence, registration of the BOBO CORNET sign would not conflict with the earlier OZMO CORNET registration.