If the earlier registered mark(s) is in use and has a reputation it could be a good basis to challenge the use by a competitor of a similar trade mark on dissimilar goods/services. So, how similar must 'similar' be?
This can sometimes be a difficult question to answer, particularly when comparing a logo/figurative mark with a word mark(s); Tribunals/Courts can also struggle with the point and issue seemingly conflicting decisions. This can create difficulties for the business trying to register its trade mark particularly when proceedings span a number of years and ultimately the application is refused, resulting in loss of revenue and costs.
Conducting searches prior to filing applications can be a useful tool to flag potential risks from identical or similar earlier marks. Searches can be as light or as comprehensive as the situation calls for and are also useful to check if an earlier mark could be in use since marks in use and which have a reputation offer a broader protection to their owners. The outcome of searches could help form a strategy to deal with the risks or to review whether it may be more prudent to adopt a different mark and put funds into growing the business.
In the case described below between Debonair Trading Internacional LDA and Groupe Lea Nature the opposition proceedings spanned nearly ten years, and involved multiple rounds of appeals. The trade marks in question were Debonair's earlier 'SO…?' trade marks and Groupe's figurative trade mark below:
Debonair commenced opposition proceedings in 2008, against Groupe's application to register its figurative trade mark. Debonair claimed earlier rights in its EU and UK registered trade mark 'SO…?' and the following further registered and unregistered European Union and European National trade marks:
'SO…? CHIC', 'SO COSMETICS', 'SO…? CONNECTED', 'SO…? DESIRABLE', 'SO…? INSPIRED', 'SO…? KISS ME', 'SO…? SENSUAL', 'SO…? SEXY', 'SO…? SINFUL', 'SO…? SUPERSTAR', 'SO…? THERE', 'SO…? WILD', 'SO…? YOU', 'SO…? LUXURIOUS', 'SO… FOR HIM', 'SO…MAX FOR HIM', 'SO…? WHAT', 'SO …? BE IT', 'SO…? ONE', 'SO …? EXCITING', 'SO…? ON THE BEACH', 'SO…? INTO THE NIGHT', 'SO…? SHOP TILL U DROP'
The goods covered by Debonair's earlier trade marks were in the main perfumery, cosmetics, deodorants, soaps, shower gel, toiletries, skin care, hair care and body care preparations for men and women; and clothing, T-shirts, footwear and headgear, caps. Debonair also claimed reputation in its trade marks. Deboanir challenged Groupe's application to register the figurative trade mark to the extent it covered goods that were similar/identical to Debonair's products. Groupe's description of goods included reference to the fact that the goods were derived from organic farming or made form products derived from organic farming.
Debonair contended that the similarity of the marks and similarity/identity of the goods would cause confusion amongst the public as to the source of the goods under Groupe's mark. Debonair also contended that its marks had a reputation because they were already in use when Groupe filed its application and the use by Groupe of its mark would take unfair advantage of the reputation and also dilute and tarnish the reputation. Debonair also relied on its common law rights of use of its marks.
In a recent decision (C-505/17P) issued on 28 February 2019, the European Court of Justice (the CJEU) confirmed that Groupe's figurative trade mark was similar to Debonair's earlier trade marks and that Debonair's trade marks could prevent the registration of Groupe's figurative mark.
The assessment of similarity of marks is done by comparing the visual, phonetic and/or conceptual similarity of the marks in question, but keeping in mind the overall impression given by them, and accounting for their distinctive and dominant elements.
The Court's findings confirming visual similarity were that Debonair's marks and Groupe's mark shared the common element 'SO' which was dominant in the signs. As regards Groupe's mark, 'SO' was fully included in the mark and was also in the first position in the upper part of Groupe's mark. The consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and phonetically, than the final part. Further in Groupe's mark, 'BiO' was also dominant, but 'BiO' and 'etic' would be regarded as a reference to the organic means of production of Groupe's goods. The apostrophe after 'SO' and the part 'etic' was negligible in the overall impression of Groupe's mark. The black/white outline and frame of the logo was found to be common place and negligible as well. On balance and weighing up the contribution of the various elements there was visual similarity.
The Court's findings confirming phonetical similarity were that there was the identical pronunciation of the common element 'SO' in the first syllable of Debonair's marks and Groupe's mark. The punctuation marks in the earlier marks could not influence the way in which 'SO' was pronounced, as their impact was considered to be limited solely to the intonation of 'SO'.
Though there was no conceptual similarity between the marks the visual and phonetic similarity meant that the marks were considered overall similar.
When the GC reassessed the case and found that the marks were similar it led to a further assessment as to whether there would be confusion to the extent that the goods of the parties were similar/identical. The Court found in favour of Debonair. Its reputation in it's 'SO…?' marks helped to further this finding. The Court also found that Debonair's reputation in its marks and the similarity of Groupe's mark would mean that the use of Groupe's mark would take unfair advantage of Debonair's reputation and result in damage - diluting the distinctiveness and tarnishing the reputation of Debonair's 'SO…?' mark. In the last type of damage the Court held that in relation to the dissimilar goods 'household cleaning products', their sale under Groupe's mark would affect the image, connected with lifestyle, youth and adventure, of Debonair's earlier marks, which had a reputation for cosmetics such as perfumes or fragrances.
Registration of trade marks can be a powerful tool for preventing subsequent similar/identical marks from being registered. It is prudent to conduct pre-filing searches to assess the risks to the use and registration of a particular mark. Searches are not mandatory but these are a comparatively small initial investment to prevent a larger amount being possibly irretrievably lost in dealing with objections to a trade mark, when funds could have been better spent on a different trade mark to further the business.