A six year long opposition between the below marks appears to have come to an end (T-584/17). Can the EUIPO, in a likelihood of confusion case, only consider arguments put forward by the parties or can it take into account other factors?
The Applicant filed an EU trade mark application for the mark (above left) in class 30 for various food products. The Opponent opposed the application on the basis of a likelihood of confusion with its earlier Spanish registered trade mark (above right) for products in class 30.
The Opposition Division rejected the opposition. The Board of Appeal disagreed finding there was a likelihood of confusion.
On appeal to the General Court, the Applicant argued for the first time that the Opponent's Mark had a weak distinctive character. The General Court rejected this argument on the ground that this was raised for the first time before it and had not been raised in the previous proceedings.
The CJEU on appeal (C-702/18P) stated that, whilst the Opposition Division is restricted to facts, evidence and arguments provided to it by the parties, the Board of Appeal has to consider all issues to ensure the law is correctly applied, even if the parties do not put forward any legal argument on those issues. The CJEU found that assessing the inherent distinctive character of the Opponent's Mark is an issue of law which needs to be considered so that the regulations can be correctly applied. It held that the EUIPO should consider this issue if necessary, of its own volition, and therefore referred the case back to the General Court for consideration.
Likelihood of confusion
The parties did not dispute that the goods covered by the respective marks were identical, highly similar or similar to an average degree.
The Board of Appeal had found that the distinctive and dominant part of the Applicant's Mark was the word PRIMART. The General Court agreed with the Board of Appeal that the figurative elements were purely decorative. It also agreed that the words 'marek lukasiewicz', because of their size and presentation, were barely legible and therefore of minor importance in the overall impression conveyed by the mark.
The marks were found to be visually similar to an average degree as all of the Opponent's Mark was included in the dominant word element of the Applicant's Mark – the first five letters of the two were identical and in the same order.
Phonetically the marks were similar to a higher than average degree given the consumer normally pays more attention to the first part of words.
The Applicant had argued that the word PRIMA had a low distinctive character and that the relevant public, Spanish consumers, would see it as referring to the quality of the goods in question. This time the General Court, following the CJEU's decision, stated that such an argument could not be regarded as inadmissible on the grounds that it had not been made before the Board of Appeal. Assessing inherent distinctive character forms part of the proceedings at the Board of Appeal irrespective of whether the parties presented facts and evidence relating to that point.
In this case, the General Court found that the Spanish general public would understand PRIMA to mean "female cousin" or "bonus payment" in Spanish. They would not however see the word as a laudatory adjective. It found the word PRIMA has no meaning in relation to the class 30 goods it covered. Even though the word PRIMA does not play an independent distinctive role in the Applicant's Mark, there could still be confusion.
Given all of the above, as most of the goods covered by the Applicant's Mark were everyday consumer goods bought in a supermarket where visual comparison is of particular importance, the General Court found that there was a likelihood of confusion and rejected the Applicant's Mark.
The outcome of this opposition is not surprising given EUIPO practice. Parties should set out all of their arguments before the Opposition Division. However, in a case of likelihood of confusion, if an applicant fails initially to argue that the opponent's mark has a weak distinctive character, all seems not to be lost as the Board of Appeal and the General Court have, of their own volition, to consider this in order to correctly interpret the relevant regulation.
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