Spill the tea! No likelihood of confusion for direct translation of earlier mark

What has happened? 

• The EU General Court has held that there is no likelihood of confusion between an earlier registration for МАЙСКИЙ ЧАЙ (which translates from Russian to English as "MAY TEA"), and later figurative registrations which include the words "MAY TEA" (in English), both covering tea. This is despite the fact that both marks would be understood by the Latvian public (who understand both Russian and English).

• The decision annuls an earlier EUIPO Board of appeal ruling which had come to the opposite conclusion (article here).

• The General Court decision is in keeping with other previous EUIPO/CJEU decisions which largely hold that the fact that a mark is a direct translation of an earlier mark is not enough for a likelihood of confusion. First, the translation must be understood by a significant part of the relevant public within the EU (which could be the public in one member state, depending on the circumstances). Secondly, the marks must also be visually and/or aurally similar. Conceptual similarity arising from the fact that the marks are direct translations of one another is generally not enough on its own for a likelihood of confusion. 
• Where the earlier mark is also partly descriptive (as the "tea" element was in this case) then establishing a likelihood of confusion will be even more difficult.

Want to know more? 

The background

The relevant rights are shown below. MAY OOO argued that there was a likelihood of confusion between the marks under Article 8(1)(b) of the EUTM Regulation.

Earlier IR registration (Designating the EU, Czech Republic, Germany, France, Latvia, Poland and Slovakia)	Later EUTM registrations
Earlier IR registration (Designating the European Union and Germany)
Class 30 (tea)	Classes 30 & 32 (including flavoured tea-based beverages non-alcoholic tea flavoured beverages)

Earlier decisions

The Cancellation Division of the EUPO initially rejected MAY OOO's invalidity actions, holding that the marks are not confusingly similar. This was reversed by the EUIPO Board of Appeal who found the marks confusingly similar, meaning Schweppes' registrations would have been invalidated. Schweppes's appealed this decision to the EU General Court. The EU General Court agreed with the Cancellation Division – the marks are not confusingly similar. 

The appeal

When making their conceptual comparison, the General Court noted that linguistic differences alone cannot exclude a conceptual similarity. However, the need for a translation can, depending on the public's knowledge of languages.

Here, the General Court held that the words 'MAY' and 'TEA' form part of basic Russian and English vocabulary, meaning the conceptual meanings of both marks can be immediately grasped by the Latvian public.

However, the General Court ruled that this conceptual similarity was not sufficient to establish a likelihood of confusion due to the weak distinctive common element TEA’/’ чай’’ in the marks and the low/nil visual and aural similarities between the marks. The lack of visual similarities between the marks was especially relevant as tea products are primarily purchased visually.

What does this mean for you?

Brand owners should continue to carefully consider foreign language versions of new marks in clearance searches to ensure all aspects of similarity are considered. However, the general rule is that conceptual similarity (arising from marks being direct translations of one another) alone is not enough; the marks must generally also share some visual and/or aural similarities for there to be a likelihood of confusion. The same is not necessarily true if the earlier mark has a reputation in the EU.

This article was written by Will Shoesmith.