"Advantage Becker ..., er, Barbara, that is ..."

Having been quite puzzled both by the reasoning and the result of the Court of First Instance's decision in Case C‑51/09 P Barbara Becker, the IPKat is heartened by the Advocate General's Opinion in her appeal against the Court's decision that her full name is confusingly similar to her husband's surname.

Right: "Barbara Becker appeals to the Court of Justice" -- in more ways than one?

So what's the story? Barbara Becker, formerly married to tennis champion Boris Becker, applied to register her name as a Community word mark for a variety of goods in Class 9 (including, notes the amused Kat, automatic vending machines and mechanisms for coin operated apparatus; cash registers and calculating machines). Harman Int. Industries opposed, citing its earlier Community word mark BECKER ONLINE PRO and an application for the Community word mark BECKER, both for identical and similar goods in Class 9. The Opposition Division, taking the view that there was a likelihood of confusion between the signs at issue, upheld the opposition. Barbara Becker appealed successfully to the First Board of Appeal. Considering, for reasons of procedural economy, only the earlier word mark BECKER and the mark Barbara Becker for which registration was sought, the Board of Appeal merely found that visually and phonetically there was some degree of similarity between the signs at issue, given that another component, the first name Barbara, was placed at the start of the trade mark applied for. Conceptually the signs at issue were clearly distinct since the surname Becker was not the dominant and distinctive element of the trade mark applied for, on account of the fact that the relevant public would perceive the mark in its entirety, that is to say Barbara Becker, rather than as a combination of the first name and surname. It also noted that Barbara Becker had ‘acquired celebrity status’ in Germany, while the name Becker was generally recognised as an ordinary and widespread surname. Dilution under Article 8(5) of Regulation 40/94 was a non-starter too, since it requires such a degree of similarity between the marks at issue that the relevant public establishes a link between them, but this had not been satisfied.

Harman Int. Industries brought an action before the Court of First Instance, which held that the Board of Appeal had wrongly stated that the marks at issue were clearly distinct. Regardless of the greater or lesser differences between the two marks visually and phonetically, the Court rejected the Board of Appeal’s assessment of the relative importance of the component ‘Becker’ compared to the component ‘Barbara’ in the mark Barbara Becker based on the following reasoning.

First, the Court considered that, even if the perception of marks consisting of personal names can vary in the different countries in the Community, at least in Italy, consumers generally attribute greater distinctiveness to the surname than to the forename contained in trade marks: it followed that the surname Becker is likely to have attributed to it a stronger distinctive character than the first name Barbara in the mark Barbara Becker. Secondly the Court rejected the argument that the fact that Barbara Becker enjoys celebrity status in Germany as the former wife of Boris Becker does not mean that, conceptually, the marks at issue are not similar, as both marks refer to the same surname Becker. Indeed, such similarity was reinforced by the fact that, in part of the Community, the component ‘becker’ is likely to be attributed a stronger distinctive character than the component ‘barbara’, which is simply a first name. Thirdly the Court cited the judgment in Case C-120/04 Medion, where a composite mark, created by the juxtaposition of a component and the sign of another earlier registered mark, may be regarded as similar to that other mark where the latter has an independent distinctive role in the composite mark, although it is not the dominant component. Applying that criterion, the component ‘becker’ was a surname which is commonly used to describe a person, retaining an independent distinctive role in the mark Barbara Becker, which was sufficient for a finding of a likelihood of confusion. Finally, given that the parties did not deny that the goods at issue were identical or similar, and also taking account of the visual and phonetic similarities of the marks Barbara Becker and BECKER, there was a likelihood of confusion between the marks, even though the goods were directed at a public with a relatively high level of attention.

Barbara Becker then appealed to the Court of Justice and on Thursday, while the rest of us were sifting the entrails of its decision last Tuesday in Google France v Louis Vuitton, Advocate General Cruz Villalón quietly delivered an Opinion strongly critical of the Court of First Instance decision.

"56. It is abundantly clear from all of the foregoing that, if the Court in the judgment under appeal wished to base its reasoning definitively on the doctrine in Medion in order to assess the likelihood of confusion between the marks at issue,... it had to explain why exceptionally in that case it was necessary to dispense with the general requirement with respect to an application for a composite trade mark to examine the overall impression, bearing in mind, in particular, its distinctive and dominant components. In other words, it should have dealt with, in that context, the possible conceptual similarity between ‘barbara becker’ and ‘becker’, because in this case it is not necessary for the component ‘becker’ to have a dominant position in the mark as a whole.

57. However, none of that is to be found in the reasoning in the judgment under appeal. Instead, there is scarcely any consideration to be found other than that ... that ‘becker’ is a surname, which is not in dispute, and which would be hard to refute. It is on that basis that the Court directly concludes that ‘becker’ and ‘barbara becker’ are similar ... and, therefore that the Board of Appeal had erred in law...

58. ... the judgment now under appeal makes no observations or assessment of the surname Becker in order to determine whether it retains an independent distinctive role, without necessarily constituting the dominant element in the mark as a whole, to which the judgment in Medion refers, whereas, in the circumstances of the case, it was essential to carry out an assessment of the distinctive character of the earlier mark BECKER. Since the latter had enjoyed a high level of notoriety with the public, any other mark which sought to designate identical goods would have more difficulties in appropriating that surname.

59. To sum up, based on a generalised understanding, in part incorrect, of the combined effects of the judgments in Fusco and Medion, the judgment under appeal may give rise to the belief, wrong in itself, that, in principle, any surname which coincides with an earlier mark may effectively prevent registration of a composite mark including a first name and the surname in question on the basis of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

60. In other words, the result of adding a purported rule of principle derived from a previous judgment of the Court of First Instance to another from a judgment of the Court of Justice, appears to lead to a result which is almost inevitable, which is that the issue of conceptual similarity is practically superseded in as much as the Court failed to take account of all the facts of the case, as it was required to do in accordance with the case-law. Most particularly, it failed to examine the influence of the first name from a conceptual point of view of the mark Barbara Becker and the greater or lesser degree of distinctiveness of a mark composed of a single surname.

61. In the light of the foregoing, I consider that the judgment under appeal is vitiated by an error of law, and that the single ground of appeal should be upheld and the judgment set aside.

62. As the error detected may be remedied only by undertaking the assessments of fact referred to in the preceding paragraph, ... I propose that the case should be referred back to the General Court in order for the latter to undertake those assessments and to give another ruling consistent with them".

Bravo, says the IPKat -- now here's an Advocate General who speaks his mind and knows how to give the Court of First Instance -- now the General Court -- a sharp cuff around the ear when necessary. He will be a worthy successor to the sadly mourned Advocate General Ruiz-Jarabo Colomer whom he so speedily replaced.

More on Barbara Becker here

Another person with whom to confuse Barbara Becker here