We're confused! How the General Court decides when trade marks are (and aren't) confusingly similar

Briefing

Two recent General Court decisions illustrate how minor differences between cases can result in different outcomes.

What happened?

In separate cases, the General Court held that there was a likelihood of confusion between the MEA and Almea (stylised) marks but not the DECATHLON and athlon (logo) marks.

In both cases, the goods and services in issue were identical or closely similar. How then could the General Court have come to a different view in each case?

A decisive factor appears to be the level of distinctiveness of the earlier marks. The DECATHLON mark was deemed to be inherently weakly distinctive in relation to sports goods since a "decathlon" is a type of sports contest. (The evidence that the DECATHLON mark had acquired distinctiveness as a result of the extensive use that had been made of it was disregarded since it did not show use in relation to the goods relied upon in the opposition.) Conversely, the MEA mark was deemed to have an average level of inherent distinctiveness. The more distinctive a mark – either inherently or through use – the greater the scope of protection afforded to it.
Another important factor appears to be the degree of stylisation of the opposed marks. The athlon mark contains several elements in addition to the word "athlon", which the court considered would help distinguish it (visually) over the DECATHLON mark. Conversely, the Almea mark was considered to be dominated by the word "Almea", with the stylisation being "minor". While this appears to have played a significant role in the outcomes of the two cases, it is interesting to note that the overall degree of similarity between the marks was comparable in each case.

Despite the above, the cases could easily have gone the other way (and did at first instance). This is particularly so had the courts focused on factors such as the level of attention of the average consumer or the length of the marks in issue. The same is true had the opponent in the DECATHLON case relied on its registration for retail services in Class 35 for which it seems likely it would have been able to show enhanced distinctiveness and reputation.

Why is this important?

Judgments about whether marks are confusingly similar to one another are a staple part of trade mark law. It is not uncommon to find seemingly comparable cases being decided differently depending on the weight given to each factor and how the case was argued.
These cases illustrate the advantages of adopting marks which are inherently distinctive and how stylisation can sometimes be sufficient to avoid a finding of a likelihood of confusion (especially where the earlier mark is weakly distinctive). They also illustrate how important it is to rely on the right earlier marks in disputes.
Lastly, they exemplify how the courts can be willing to depart from some of the presumptions in trade mark law: the beginning of a mark will not always attract more attention; it is not always easier to distinguish differences between marks when they are shorter; and, for composite marks, the word element is not always dominant.

The cases are considered in more detail below.

Almea and Mea

An EUTM application for the Almea (stylised) mark was opposed in classes 3 (cosmetics etc) and 5 (veterinary preparations, sanitary preparations, etc) based on an earlier German registration for the mark MEA. The General Court upheld the Board of Appeal's finding that there is a likelihood of confusion between the marks. This was on the basis that:

The goods at issue are identical or closely similar.
The level of attention of the average consumer is average for the class 3 goods, and high for the class 5 goods (these being aimed at professional consumers).
The earlier mark, MEA, has no meaning and therefore has an average level of inherent distinctiveness.
The stylisation of the 'l' element (a bamboo shoot) of the Almea mark is minor and is secondary to the word element.
While the beginning of a mark usually attracts more attention, that is not always the case. Here, the "Al" and "mea" elements would attract equal attention. This is particularly so as the shared "mea" element consists of two syllables, whereas the "Al" element is only one syllable. The presence of the "Al" element would not prevent consumers from noticing the common "mea" element. The earlier MEA mark is completely included in the "Almea" mark and makes up three fifths of it.
Given the identity/close similarity between the goods in issue, the (at least) low degree of visual and phonetic similarity between the marks, and the average degree of inherent distinctiveness of the MEA mark, there was a likelihood of confusion between the marks.

DECATHLON and ATHLON

An EUTM application for the athlon (logo) mark was opposed in class 25 (athletic clothes and hats) based on an earlier EUTM registration for the mark DECATHLON, owned by the French sporting goods retailer. The General Court upheld the Board of Appeal's finding that there is no likelihood of confusion between the marks. This was on the basis that:

The goods at issue are identical.
The average consumer usually shows an average or normal level of attention when buying clothing as these are mass consumption goods.
The DECATHLON mark is of weak distinctive character in relation to sporting goods. The word "athlon" means "contest" in Greek and is commonly used in relation to athletics events. The word "Decathlon" (and "athlon") is therefore inherently descriptive or allusive for the goods in issue.
The evidence of enhanced distinctiveness through use submitted by the opponent related to retail services (in Class 35), not clothing (in Class 25). Since the opponent had not relied upon Class 35 in the opposition, the evidence would be disregarded.
For composite marks, it does not automatically follow that the word element will be considered dominant. The athlon mark contains several elements in addition to (and not overshadowed by) the word "athlon". This includes a prominent "infinity" logo at the beginning of the mark (the most important position), which has no meaning in relation to the goods applied for. Since Class 25 goods are primarily purchased visually, the visual differences between the marks were important.
Phonetically, the marks are similar to an average degree. For those who understand the meaning of the word "athlon", the marks have a certain conceptual similarity but that arises from a shared element which has a weak distinctive character.
In view of the low visual similarities between the marks, the weak distinctive character of the shared element "athlon" and the fact that clothing is largely bought visually, there was no likelihood of confusion between the marks.