Do tapirs look like pigs? ‘Peppa Pig’ EUTM wins invalidity battle before EU General Court

In 2017 this blog reported on the decision of the EUIPO First Board of Appeal that considered whether the signs represented below, registered for the same goods (clothing, footwear, headgear) in Class 25 of the Nice Classification, would be confusingly similar, so that the one on the right hand side could not be a valid EU trade mark (EUTM):

   

This question had been, first, addressed and answered in the negative in 2016 by the EUIPO Cancellation Division. Following an appeal in 2017, the EUIPO First Board of Appeal annulled the decision of the Cancellation Division, and declared the EUTM 11775509 ‘TOBBIA’ invalid in relation to all relevant goods.

The owner of the TOBBIA sign, Pan Xianhao, subsequently appealed to the EU General Court (GC) claiming that this should annul the contested decision. It claimed that the Board of Appeal had erred, first, in the comparison of the contested mark with the earlier mark and, secondly, in the global assessment of the likelihood of confusion.

Last week, the GC handed down its decision on the matter, confirming the earlier take of the Board of Appeal.

The legal framework

Under Article 53(1)(a) of Regulation 207/2009 (now Articles 60 and 8(1)(b) in Regulation 2017/1001 on the EU Trade Mark, EUTMR), read in conjunction with Article 8(1)(b) thereof, a registered EUTM must be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

According to settled case-law on the matter, the likelihood of confusion must be assessed globally, in accordance with the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances at issue, in particular the interdependence between the similarity of the signs and that of the goods or services covered (T-162/01, Laboratorios RTB v OHIM, Giorgio Beverly Hills).

The GC’s considerations

Comparison of the signs: visual, phonetic or conceptual similarities

In assessing the similarity of the signs, Pan Xianhao submitted that the Board of Appeal had failed to take into account the signs as a whole, as it had only focused on certain aspects of their graphic representations.

In this regard the GC reasoned that – insofar as the visual, phonetic or conceptual similarity of the signs are concerned – the global assessment of the likelihood of confusion must be based on the overall impression given by the signs (bearing in mind their distinctive and dominant elements). The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment and that consumer normally perceives a mark as a whole without engaging in details (OHIM v Shaker, C-334/05).

Having said that, with regard to the visual similarities of the signs, the GC considered that these are similar to the extent that they share a figurative element depicting an anthropomorphic animal with a round head and a cylindrical snout. The shape of the head and snout is almost identical in both signs, and so are the ears, cheeks, eyes, nostrils, and smiley mouth.

There are, however, some visual differences, including: clothes, colours used, and word elements below the signs. Nonetheless, those differences were considered not capable of outweighing the similarities pointed out in the contested decision. Given that the average consumer normally perceives a mark as a whole without engaging in detail, the GC considered that the Board of Appeal was right in in finding that the signs at issue would be similar.

The GC also dismissed the argument that, unlike PEPPA PIG, the animal represented in the TOBBIA mark would not be a pig, but rather a tapir. Even if the public were to identify it as a tapir instead of a pig, the earlier mark would also, in view of the significant similarities in the graphic elements of both signs, be associated with that animal. Consequently, whether the public identifies the graphic elements of the two marks as two pigs or two tapirs in no way alters the assessment of the similarity of the marks.

From an aural point of view, the GC considered that there are admittedly differences between the word elements in the marks at issue, e.g. in that the earlier mark begins with the group of letters ‘PE’ whereas the contested mark begins with the group of letters ‘TO’ and Peppa Pig is a compound noun whereas TOBBIA is not. This differed from the reasoning employed by the Board of Appeal where it was considered that there is a certain association (likely to cause confusion) between the element “Peppa” and “Tobbia”: both are disyllabic words and have the repetition of a strong consonant, namely PP and BB. Nonetheless, the fact that there was certain correlation between the element “peppa” and “tobbia” was considered sufficient in order to establish a similarity between the two signs.

Lastly, the signs were considered to be conceptually similar for the relevant public since they both represent a pig. Contrary to what the applicant claimed, the GC considered it unlikely that the public would associate the mark TOBBIA with a tapir, given that both signs contain various characteristics which the general public would associate with a pig.

In light of the foregoing, the GC did not consider that the Board of Appeal had erred in finding that the signs at issue would be similar.

The global assessment of the likelihood of confusion

As regard to the global assessment of the likelihood of confusion, the GC reasoned that the TOBBIA sign owner had no reason to claim that the Board of Appeal had erred when carrying out its assessment of the likelihood of confusion. In particular, the GC recalled that the various factors of a global assessment analysis might come into consideration in different ways, also depending on the conditions under which the goods and services covered by the signs are marketed. In the clothing sector, where the goods covered by the signs at issue are usually sold in self-service stores where the consumers may choose the product themselves and must therefore rely on the image of the trade mark as applied to the product, the visual similarity between the signs will as a general rule be more important than the phonetic and conceptual similarities. In the case at hand, the figurative elements of the signs are extremely similar and, due to their position and size in both signs, consumers would not overlook them.

Conclusion

Similar to the previous instances, the GC’s considerations do not appear surprising. Also considering Peppa Pig’s appearance, one might indeed wonder how easy it is to discard a finding of confusing similarities and not associate the Tobbia mark with the Peppa Pig franchise. In any event, at times images speak louder than words - if a picture could summarize this case, then this would be it: