1 avril 2019

CJEU reviews General Court's assessment of marks

The Applicant's mark

Earlier Marks

EU word mark "SO…?" in class 3

UK word mark SO…? in class 25

Class 3: "Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; eau de toilette, products for perfuming linen, perfumery, bases for flower and plant perfumes, perfumed micro-capsules, incense, scented water, oils for perfumes and scents, shampoos, oils for cosmetic purposes, cosmetic creams, milks for the face and body, cleansing milk, ointments for cosmetic purposes, cosmetic preparations for baths, not for medical purposes, bath salts, not for medical purposes; deodorants for personal use; aromatics [essential oils], scented wood, eau de Cologne, disinfectant soaps and air fresheners, lavender water, fumigation preparations [perfumes], foam baths, not for medical purposes, cosmetic preparations for slimming purposes, beauty masks, sun-tanning preparations [cosmetics], depilatory preparations, cosmetics for animals, make-up removing preparations, lotions for cosmetic purposes, make-up preparations, nail care preparations, exfoliating cosmetic preparations, mint for perfumery, perfumed potpourris, soaps for foot perspiration, tissues impregnated with cosmetic lotions, scented water, extracts of flowers and plants (perfumery), mint essence for perfumery, pastilles and chewing gum for cosmetic purposes, all the aforesaid products being derived from organic farming or made from products derived therefrom"

Class 25: "Clothes (clothing), footwear (except orthopaedic footwear), headgear, dressing gowns, shirts, T-shirts, scarves, bandanas, hats, helmets, overcoats, parkas, all the aforesaid products being derived from organic farming or made from goods derived from organic farming"

Class 3: "Toilet preparations; preparations for the care of the skin, scalp and the body; suntanning preparations; preparations for reinforcing and strengthening nails; preparations for use in the shower and the bath; toilet soaps; preparations for toning the body; all being non-medicated; perfumes; fragrances; aftershaves, milks, oils, creams, gels, powders and lotions; shaving foams; cosmetics; eau de cologne; toilet waters; essential oils; shampoos; conditioners; hair lotions; preparations for the hair; hair styling products; anti-perspirants; deodorants for personal use; dentifrices"

Class 25: "Clothing, footwear, headgear, T-shirts, caps"

In March 2008, Groupe Léa Nature ("the Applicant") filed an EU trade mark application for a figurative mark covering goods in classes 3 and 25. (above left). Debonair ("the Opponent") opposed the application based on its earlier EU and UK trade marks covering identical and similar goods in classes 3 and 25 (above right).

The Opposition Division rejected the opposition. Debonair filed a notice of appeal and the First Board of Appeal annulled the decision of the Opposition Division and rejected the application.

The Applicant then appealed the decision before the General Court which found the signs similar and dismissed the action. Groupe Léa Nature appealed to the CJEU.

The Court noted that, according to settled case-law, the likelihood of confusion must be assessed globally, taking into account the visual, phonetic or conceptual similarity of the marks in question bearing in mind their particular distinctive and dominant elements. Moreover, the assessment needs to examine the marks in their whole entirety, and only if the other elements of the marks are negligible is it possible to base the assessment of similarity on the dominant element.

Regarding the comparison of the signs, the Court noted that the General Court was right in conducting the general assessment recognising the importance of the element 'so', which is the first element of the Earlier Mark and which is included in a prominent position in the Applicant's Mark.

The General Court also considered that the average consumer pays greater attention to the beginning of marks. In addition, the Court conducted an assessment of the other elements of the Applicant's Mark and noted that the element 'bio', given its position and size, was likely to be remembered by the relevant public in the same way as the element 'so'. For this reason, the element 'bio' had the same importance as the element 'so' and the General Court was under no obligation to recognise the element 'so' as dominant in order to conclude that the marks at issue were similar.

The Court also clarified that the General Court's reasoning can be implicit, provided that it enables the persons concerned to understand the decision making process and allows the CJEU to exercise its power of review.

In conclusion, the CJEU confirmed that the General Court conducted a correct examination of all the relevant elements in order to assess the similarity between the marks in question and did not fail to provide the reasons underlying its decision. Hence, it dismissed the appeal.

Case Ref: C-505/17

Fabio Lo Iacono

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