The building blocks of a trade mark infringement claim: the EU General Court’s view on MAGNEXT v MAGNET 4

Cases T‑604/11 and T‑292/12 Mega Brands International v OHIM is a decision of the EU General Court concerning two sets of opposition proceedings brought by Diset SA against two Community trade mark applications of Mega Brands (creator of Mega Bloks, the long-time Lego rival) based on a Spanish national registration. Legally it is unremarkable, but its decision on the facts illustrates the subtleties, inconsistencies and analytical challenges associated with understanding and applying trade mark infringement law in Europe.

	Applicant – Mega Brands	Opposer – Diset
Marks	(1)  (2) MAGNEXT	MAGNET 4 (Spanish word mark)
Classes	Class 28: toys and playthings, in particular multi-part construction toys, its parts, its accessories and its fittings	Class 28: games, toys, gymnastic and sports articles not included in other classes; decorations for Christmas trees

The opposition was based on Article 8(1)(b) of the Community Trade Mark Regulation (Regulation No 207/2009) (the CTMR), ie, that Mega Brands’ applications were sufficiently similar in terms of both the marks and the goods and services of their specifications, such as to create a likelihood of confusion between the applications on the one hand and the mark on the other.

The Opposition Division of the Office for Harmonization in the Internal Market (OHIM) upheld the oppositions as did the Board of Appeal, which agreed with the Opposition Division. Next in the appeal hierarchy was the EU General Court (previously called the Court of First Instance). It upheld one opposition but dismissed the other.

Oh to be a kid again...

As many of you will know, the assessment of confusing similarity in trade mark opposition, infringement or validity cases under European trade mark law requires a “global appreciation” of all factors, in particular the visual, aural and conceptual similarities of the marks under analysis. Account should be taken of the perception of the average consumer, who is reasonably well informed and reasonably observant and circumspect and in this case, held the Board of Appeal, simply Spanish-speaking consumers (of what goods the judgment does not say).

The General Court remarked that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, before spending the next two paragraphs of its judgment doing precisely the opposite: noting the excessive size of the X in the device mark, its stylisation and the emphasis of “NEXT” as a separate element; the presence of “4” in Diset’s mark but not in Mega Brands’; and so on.

With these elements in mind, the global appreciations of both the Board of Appeal and General Court (as per the latter’s judgment) can be summarised as follows:

	Board of Appeal’s view	General Court’s view
Goods and services	Identical in part
Diset’s mark’s distinctiveness	Average	Weak (public will connect the mark with magnetic characteristics of toys)
Device mark’s degree of similarity with Diset’s mark
Visual	Certain degree	Very weak degree (because of the stylised elements noted above)
Aural	Medium degree
Conceptual	Not similar (unless, which it did not think was the case, Spanish speakers would associate the two with magnetism, in which case similar to some extent)	Dissimilar
Verdict	Likelihood of confusion established	No likelihood of confusion, based on an overall very weak degree of similarity and the weak degree of distinctiveness of Diset’s mark
Word mark’s degree of similarity with Diset’s mark
Visual	Medium degree	Average degree (given it lacked the distinguishing stylised elements of the device mark)
Aural
Conceptual	Dissimilar
Verdict	Likelihood of confusion established	Likelihood of confusion established, based on an overall medium degree of similarity and despite the weak degree of distinctiveness of Diset’s mark

While intended as a summary and to keep this post as brief as possible, the above table omits very little of the analysis in the General Court’s judgment. The Court adopts a fairly relaxed approach, briefly assessing the different elements of the marks and then rounding them up to reach a broad conclusion. With both the OHIM Opposition Division and the Board of Appeal behind it, Diset might have hoped it would win again, but the General Court, clearly considering itself free to look at the issues afresh (a highly debatable point, given the Court’s jurisdiction under Article 65(2) CTMR), agreed on the word mark but thought differently on the device.

Subject to any further appeal to the CJEU (which should only be on a point of law, which would be hard to find here), the opposition against the word mark is complete and successful. The device mark is still in play, and the case will return to the Board of Appeal to consider an opposition by Diset based on another mark (below).  Merpel, eager to butt in, thinks that one’s hopeless.

As well as neatly summing up the thought process adopted by the Board of Appeal and General Court in assessing likelihood of confusion, the case serves as a good illustration of what can happen when multiple tribunals apply the nebulous “global appreciation” test to the same facts – sometimes they agree but other times they reach completely opposite conclusions. Sadly, those conclusions play out on a depressingly slow timescale – Mega Brands’ device mark was applied for over six years ago (the word mark three and a half). The case also demonstrates some of the differences stylised marks have over simple word marks: stylised marks (generally) come with increased inherent distinctiveness, while also benefitting from an added method of distinguishing themselves from otherwise similar rivals (albeit that, in this case, it took half a decade of wait and legal proceedings before those differences bore fruit).