Yoga Alliance: a reduction in protection for descriptive trade marks?

In-depth analysis

After differing decisions from the EU IP Office's Opposition Division and Board of Appeal, the EU's General Court has issued a decision re-establishing a principle that has arguably become diluted in recent years: that descriptive words are weak elements of composite marks and cannot alone form the basis of a finding of a likelihood of confusion.

What happened?

In April 2018, Mr Swami Vidyanand applied to register the composite mark pictured below (as an EU designation of its International registration) for various services in class 41 (education, training, entertainment, sporting and cultural activities). YAplus DBA Yoga Alliance filed an opposition against the application in its entirety based on its earlier EU trade mark registration for the composite mark pictured below covering various services in classes 35, 41 and 42 (including certain education services in the field of yoga).
The EU IP Office Opposition Division upheld the opposition, based on the perception of the marks by non-English-speaking Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers in the EU. The Board of Appeal annulled that decision and held that there was no likelihood of confusion between the marks.
The General Court has now settled the matter by concluding that there was no likelihood of confusion between the marks. A key factor was that the words YOGA ALLIANCE were descriptive of the services in question and so of low inherent distinctiveness. In coming to this conclusion, the General Court held that Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers would likely understand the descriptive meanings of the words YOGA and ALLIANCE given their common usage by international brands. Helpfully, the General Court also reiterated that the degree of visual, aural and conceptual similarity between marks need not always be given the same weight (particularly if the similarity in question stems from descriptive content).
This decision is good news for brand owners who seek to adopt commonly understood descriptive elements within their marks. Decisions from the EU IP Office and General Court in recent years have arguably tended to over-protect descriptive or weakly distinctive marks or elements within marks (see our article on this here). The fact that the tribunal/court must consider the position from the viewpoint of the average consumer across all EU member states (some of whom might not understand English) has been - although is not always - a factor in this. This case might suggest that the tide is turning.
Nonetheless, brand owners should still take care when using or applying to register in the EU marks containing seemingly descriptive terms if those terms might not be understood by the average non-English speaking consumer. It should not be automatically assumed that descriptive terms are free to use. Careful clearance should be undertaken to make sure that there are no conflicting prior rights.

The mark applied for	The earlier mark

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The thrust of the General Court's decision focuses on YAplus DBA Yoga Alliance's arguments that the Board of Appeal erred in its assessment of (i) the level of attention of the relevant public, (ii) the degree of similarity of the signs at issue, and (iii) the factors relevant to the analysis of the overall likelihood of confusion.

Level of attention of the average consumer

The General Court found that the Board was right to hold that the average consumer of 'training services' in class 41 would pay an above average level of attention to the marks at issue, given that training services are not every day services and involve a long-term commitment on the part of the consumer. These types of commitments are typically preceded by a process of considerable reflection on the part of the consumer, who will likely weigh up the size of the investment to be made.

The degree of attention paid to 'educational services' in class 41, on the other hand, may vary between average and above average, depending on the cost of the service provided. The General Court noted that some types of yoga classes, for instance, are offered at low cost, and so consumers of those services would not pay more than an average degree of attention. The General Court therefore overturned the Board's original finding in this regard.

Degree of similarity of the signs

The Opposition Division has originally found that the marks were visually similar to an average degree, phonetically highly similar and conceptually similar to a low degree. The Board of Appeal disagreed, finding a low degree of visual similarity, an average degree of phonetic similarity and ‘partial’ conceptual similarity between the marks.

The General Court upheld the Board's conclusion that the relevant public, even being non-English-speaking Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers, would likely understand the descriptive meanings of the words YOGA and ALLIANCE, given their common usage by international brands eg in the fields of wellness and air transport, respectively.

The General Court carried this assessment of descriptive meaning through to the assessment of the dominant and distinctive elements of the marks at issue. It held that the Board of Appeal was entitled to decide that the applicant's trade mark contained no dominant elements (given that the device and words were, in and of themselves descriptive or banal), while the flower device was the co-dominant element of the opponent's earlier mark, alongside the word YOGA.

Considering the limited distinctiveness of the shared words YOGA ALLIANCE in both marks, the General Court had no qualms in deciding that the visual similarity between the marks at issue was low, and that the aural and conceptual similarity between the marks was average (due to the shared YOGA ALLIANCE element).

Likelihood of confusion

The General Court placed considerable weight on the need to keep descriptive words free for use by third parties. Excessive protection of trade marks which have a very weak distinctive character is to be avoided.

It held that lower tribunals must remember that the degree of visual, aural and conceptual similarity between trade marks at issue need not always be given the same weight. In this case, for instance, the average conceptual similarity between the marks should only be given limited weight in the assessment of the overall likelihood of confusion because that similarity stems from descriptive content. This is all the more true for the part of the relevant public paying an above average level of attention for the goods and services at issue.

Accordingly, irrespective of the varying degree of knowledge of the English language in some EU Member States, no likelihood of confusion was found in this case due to the descriptiveness of the words YOGA ALLIANCE and the differing graphical elements between the marks at issue.