Assessment of likelihood of confusion
Article 8(1)(b) of the EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
According to settled case-law of the Court of Justice of the European Union (CJEU), the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion.
A likelihood of confusion presupposes (i) that the marks at issue are identical or similar and (ii) that the goods or services which they cover are identical or similar. Those conditions are cumulative, so if one is not satisfied then there cannot be a likelihood of confusion.
According to that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services.
In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question.
The three-step test under Article 8 (1) (b) of the EU Trademark Regulation
- Are the goods or services similar or identical?
According to settled case-law, in assessing the similarity between the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
In this case the goods in class 25 (clothing and shoe wear) are considered identical (see para. 42)
- Is there a visual, phonetic or conceptual similarity between the signs?
The signs to be compared are
Mark applied for
As stated above, the global assessment of the likelihood of confusion, for the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, with account being taken, in particular, of their distinctive and dominant components. The respective marks’ perception 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 any analysis of its various details.
In this case the General Court stated that both signs were phonetically highly similar and visually, taking into account the figurative element added to the word “Messi”, similar to an average degree.
Regarding the assessment of the similarity at the conceptual level, the General Court held that the relevant public would associate the word “Messi” with the world-famous football player. The General Court stressed in this respect that it may take into account well-known and notorious facts that are put forward by the parties to the opposition proceedings and that are likely to be known by any one or which may be learnt from generally accessible sources (para 60). According to the General Court, the “Messi” word sign is particularly well-known to the relevant public as being the name of the famous football player. Therefore, there is no conceptual similarity possible between “Messi” and “Messi”.
- Is there likelihood of confusion?
As stated above, 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 lesser degree of similarity between those goods or services may be off-set by a greater degree of similarity between the marks, and vice versa (judgment of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 17).
In summary, the General Court reached the following legal and factual conclusions:
- there is an identity between the goods in class 25;
- the relevant public is composed of the average consumer of sportswear, who is reasonably well-informed and reasonably observant and circumspect;
- there is a phonetic similarity to a high degree;
- there is a visual similarity to an average degree;
- the earlier mark “Massi” has a normal distinctive character.
Although it is clear from the General Court’s case-law that likelihood of confusion in the mind of the relevant public should be appreciated “globally” and that the rule of interdependence implies that a lesser degree of similarity between the signs may be off-set by the identity between goods, the General Court then applied “the rule of neutralisation” as a rule that seems to supersede all the other relevant legal and factual considerations cited above.
The rule of neutralisation
Indeed, according to the CJEU’s settled case-law, conceptual differences may counteract, to a large extent, visual or phonetic similarities between the signs concerned. For there to be such a counteraction, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning (judgments of 24 March 2011 in Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 66, and 14 October 2003 in Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 54).
This rule of neutralisation or the counteraction theory seems to set aside all other legal considerations and notably the global assessment of the risk of confusion and the rule of interdependence. Indeed, if a word has a fixed meaning that the public associates immediately with a person (Picasso, Messi, Obelix) or concept (“sir”, “bass”, “champion”) the likelihood of confusion seems to be excluded.
It should be stressed that the General Court has not taken into account the category of goods concerned in its assessment of the similarity between the signs at issue (CJEU 12 January 2006, C-361/04, Picasso/Picaro, para. 26 and 27).
The General Court and the CJEU have applied this rule of neutralisation in – amongst others – the following cases:
- BASS v. PASH (both for clothing and footwear)
Clear meaning of the word “bass” (calls to mind the voice of a singer or a musical instrument).
(General Court 14 October 2003, T-292/01, Phillips – Van Heusen/EUIPO-Pash Textielvertrieb und Einzelhandel)
- PICASSO v. PICARO (both for vehicles)
Clear meaning of the word ‘Picasso’: ‘Picasso’ inevitably refers to the painter (para. 27).
(General Court 22 June 2004, T-185/02, Ruiz-Picasso and others/EUIPO-Daimler Chrysler; confirmed by the CJEU 12 January 2006, C-361/04)
- SIR (fig.) v. ZIHR (both for cosmetic products)
Clear and specific meaning of the word ‘sir’.
- MOBILIX v. OBELIX (both for telecom services)
Clear meaning of the word ‘Obelix’: ‘Obelix’ refers to the famous comic book character.
- COHIBA (fig.) v. KIOWA (fig.) (both for tobacco products)
‘Kiowa’ has a fixed meaning: the Spanish consumer will associate the word ‘Kiowa’ with an American Indian.
(General Court 18 May 2011, T-207/08, Corporación Habanos/EUIPO-Tobacos de Centroamérica)
- CHAMPION v. CHEMPIOIL (both for motor oil products)
‘Champion’ is a common word with an immediately obvious meaning to the public.
(General Court 1 June 2016, T-34/15, Wolf Oil/EUIPO-UEB SCT Lubricants; confirmed by the CJEU 5 October 2017, C-427/16 P)
In all these cases the marks in question had no meaning for the goods or services concerned. Nevertheless, the courts concluded that the signs were conceptually different and that – for this reason alone – there was no likelihood of confusion between the signs.
Conclusion: Messi vs Picasso
Applying the rule of neutralisation or the counteraction theory in an absolute manner seems incompatible with the overall assessment of the signs to be carried out. Applying this rule leads to the result that, where there are conceptual differences, regardless of the identity of the goods and services and clear visual and phonetic similarities, likelihood of confusion is excluded.
Moreover, it is not clear why the category of the goods or services concerned, when assessing the conceptual meaning of a specific word, is not taken into consideration
The theory of counteraction may lead to unwanted consequences.
Indeed, the decision of the General Court in the Messi case implies that publically well known or famous family names – such as Messi - will always prevail in proceedings against earlier similar trade marks.
Even worse, assuming that the “Massi” mark is genuinely used, a consumer, being confronted with the “Messi” mark on sportswear or shoes may even take the view that the earlier “Massi” mark in fact infringes on the later “Messi” mark …
On the other hand – and to the contrary - if a trademark consisting of the family name of a famous person – such as Picasso - or of a word with a fixed meaning attacks a later mark, the latter will most probably successfully invoke the theory of neutralisation to its advantage.
Taking the above considerations into account, one may ask how courts would deal with a conflict in the ICT sector between, ‘Apple’ and ‘Ipple’? If the relevant public is capable of grasping the clear and specific meaning of the word ‘apple’ will the rule of neutralisation or the counteraction theory be applied?
Contrary to the current case-law of the General Court and the CJEU, we are of the opinion that the importance attached to the conceptual comparison should not be unlimited when an average or high degree of visual and phonetic similarity between the two signs is upheld and when the goods or services are identical or highly similar.