‘SO…?’ and ‘S.O.’ confusingly similar, says EUIPO Fourth Board of Appeal

Can “SO…?” and “S.O.” be regarded as confusingly similar, even if the said marks are envisaged for different classes of the Nice Classification? IF SO, do they bear the same meaning within the EU?

The EUIPO Fourth Board of Appeal recently answered this in the affirmative in a decision handed down a few days ago.

Background

In January 2009, Debonair Trading Internacional (the Applicant) sought to register the following as an EU trade mark (EUTM):

The application was for certain goods in Classes 14 (jewellery, costume jewellery, horological and chronometric instruments and watches) and 25 (clothing, footwear, headgear, T-shirts and caps) of the Nice Classification.

In April 2009 s. Oliver Bernd Freirer GmbH & Co. KG (the Opponent) filed a notice of opposition on the basis of its earlier registered EUTM:

This had been registered since 2001 for certain goods in Class 25 (clothing for men and women, including woven and knitted clothing and clothing of leather and imitation leather, in particular, blouses, shirts, T-shirts, sweat shirts, jackets and pullovers) of the Nice Classification.

Based on Article 8(1)(a) and (b) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR)), the Opponent claimed that the later mark would likely be confused with the former, as well as it being either identical and/or similar to the earlier trade mark for identical and/or similar goods.

In May 2018, the EUIPO Opposition Division upheld the application for all goods in Class 14, but rejected it for those under Class 25.

The applicant appealed to the EUIPO Fourth Board of Appeal in July 2018. It argued that:

• The signs were aurally and visually dissimilar, on account of the different meanings on the side of the Spanish and Italian speaking part of the public,
• There was no genuine use of the opponent’s trade mark, and
• The overall impression created by the earlier trade mark plainly concerned the initials ‘S’ and ‘O’, separated by full stops, whereas the contested signs was presented as a word ‘SO’, followed by a different punctuation, namely an ellipsis and a question mark, thus excluding any likelihood of confusion.

The Opponent disputed all claims. It argued inter alia that a number of countries in the EU would not perceive any meaning in either mark and that the applicant had failed to support its allegation that consumers that do not speak English are likely to be familiar with common English words. In this regard, the Opposition Division had correctly assessed the similarity between the signs.

For the purpose of this post, the following analysis revolves around the Board’s considerations regarding the likelihood of confusion between the two marks.

Visual, conceptual, and aural similarities

As regard to the goods, the Board first stated that these are identical when they inter alia include as a broader category the goods of the contested mark (T-133/05, Pam-Pim’s Baby-Prop). The contested goods, ie clothing, headgear and T-shirts, are identical to the Opponent’s goods. The same applies to footwear and caps.

As regard to the comparison between the marks, the Board considered that this entailed an assessment of the visual, aural or conceptual similarities of the signs in question, based on the overall impression conveyed by the marks and bearing in mind, in particular, their distinctive and dominant elements.

Guarding up against undue trade mark registrations 

The earlier word mark consists of the letters ‘S’ and ‘O’, each followed by a full stop. The contested word mark consists of the letters ‘SO’, followed by an ellipsis and a question mark.

The common verbal part, ‘SO’, with or without punctuation marks is meaningless when it comes to – for instance – the French-speaking and the non-English speaking part of the public. The English-speaking part of the public uses the common term ‘SO’ as an adverb, conjunction, adjective or pronoun and both the contested and the earlier mark could be perceived as such. However, in that sense the word ‘so’ does not provide any factual information, i.e. does not convey a concept. As such, it lacks a conceptual meaning which would be relevant for the comparison of the signs. Neither the contested nor the earlier mark conveys a concept for English-speaking consumers.

Visually, the letters ‘S’ and ‘O’ of the earlier mark are entirely reproduced by the verbal element ‘SO’ of the contested sign and they only differ in their punctuation marks. However, the ellipsis, the question mark, and the full stops will not be perceived as particularly distinctive because these are simple punctuation marks and give raise to minor visual differences. It followed that such differences could be easily overlooked on account of the textual element ‘S’ and ‘O’, present in both signs in the same order. The signs were therefore considered to be visually similar to an average degree.

Aurally, the pronunciation of both signs is identical for the public that pronounces them as a single word ‘SO’ or by separating the sounds corresponding to the letters ‘S’ and ‘O’ in their language equivalents. The contested mark’s element ‘SO’ repeats exactly the same sounds as the earlier mark’s [s] and [o], all in the same order. Therefore, even in case the one mark is pronounced as a single word ‘SO’ and the other by separating the sounds ‘S’ and ‘O’, the marks are still aurally similar to an above average degree. The ellipsis and the question mark of the contested mark have no relevant impact on the aural comparison. The signs were therefore considered aurally identical for part of the relevant public or similar to an above average degree for the other part.

Overall assessment

It follows from case law of the Court of Justice of the European Union (CJEU) that there is a likelihood of confusion if there is a risk that the public might believe that the goods or services in question come from the same undertaking, or from economically-linked undertakings. Furthermore, according to Article 8(1)(b) EUTMR the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (C-39/97, Canon).

The Board recognised that the likelihood of confusion must be assessed globally. This requires consideration of several factors – in particular – the similarity between the signs and between the goods or services covered. A lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (C-39/97, Canon & C-342/97, Lloyd Schuhfabrik). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (C-39/97, Canon).

The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect, the level of attention is likely to vary according to the category of goods or services in question, and only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (C-342/97, Lloyd Schuhfabrik).

By taking into account the aforementioned together, the Board found that there was a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

Conclusion

In conclusion, this decision indicates that, despite the fact that a word mark might carry other meanings in various EU jurisdictions, that fact alone does not exclude a finding of confusing similarities. Even if that was the case, the second hurdle to overcome would be – as it was in this case – the lack a conceptual meaning which would be relevant for the comparison of the signs in question.