Are two different whales conceptually identical? Fourth Board of Appeal finds likelihood of confusion despite some visual dissimilarities between marks

Can simple things become difficult? In a recent decision, the Fourth Board of appeal reaffirmed a basic truth: if your sign has the same concept of another, then there is conceptual identity between these two.

Having recognized that there are indeed differences between the signs, in this case the Board affirmed that such differences constituted minor elements of secondary importance which the average customer would not be likely to identify or remember. 

Background

In September 2017, Twothirds SL (the Applicant) sought to register the following figurative mark as an EU Trade Mark (EUTM):

Registration was sought for certain goods in Class 25 (clothing, headgear and footwear) of the Nice Classification.

In December 2017, P2M Société par actions simplifiée à associé unique (the Opponent) filed a notice of opposition on the basis of its earlier registered EUTM:

The earlier EUTM had been registered since 2016 for certain goods in Classes 18, 24 and 25 (clothing for women, men and children, footwear, slippers, pants, underwear, suits, shorts, trousers, shirts, sweaters, jackets, parkas, socks, underwear, swimming costumes, robes, gloves, belts, hats, and caps).

The Opposition Division found that there was a likelihood of confusion pursuant to Article 8(1)(b) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR) in respect of the goods covered by the earlier EUTM. It also held that the signs were visually similar to an above average degree as well as conceptually identical because they both depicted a whale.

Appeal to the Fourth Board of Appeal: parties’ arguments

The Applicant appealed the decision to the Fourth Board of Appeal of EUIPO in March 2019, arguing that the conflicting signs are visually dissimilar as they give a different global impression. In particular, the earlier mark:

- represents a grey ellipsoidal shape whilst the contested sign has a black rectangular shape,

- comprises soft, non-sharp lines, while the contested sign is a square with marked angles,

- has humanised features with a smiling mouth, while the contested sign has inexpressive features,

- has a short tail, rounded and geared to the right, whereas the tail in the contested sign is addressed to the top and slightly angled to the left, with an angular finishing, and

- has a significantly smaller tail as opposed to the tail in the contested sign which comprises almost a one third part of the image.

Furthermore, the conceptual similarities between the signs were not enough to counteract the visual dissimilarities: even though the signs represent the same idea, that is an animal that is cetaceous, the objects were represented differently because the later sign represents a cachalot and the earlier mark is a blue whale.

The Opponent argued that the signs were visually highly similar and conceptually identical. The main features of the marks are the same since they depict a whale, placed in profile and therefore they also give the same overall impression. Should there be a phonetic comparison between the signs, both would be referred to as ‘whale’, which also leads to a finding of aural identity between them.

The Board’s considerations

Comparison of the goods

As correctly reasoned by the Opposition Division, the contested goods ‘clothing’ and ‘footwear’ are identically included in both lists of goods. The contested goods ‘headgear’ includes as a broader category the earlier mark’s ‘hats and caps’. Therefore, all the contested goods were found to be identical.

Comparison of the signs

The comparison of the marks includes an assessment of the visual and conceptual similarity of the signs, based on the overall impression given by the marks and bearing in mind their distinctive and dominant elements.

Visually, both marks show the mere silhouette of a simplified version of a whale represented in profile and facing to the left. Both images are characterised by a large head, one open white eye and a slightly open mouth, both placed in the lower left part of the head, and a tail with a Y-shaped end facing upwards. There are no specific characteristics that will make the relevant public at large – which is not specialised in cetacean species – to conclude that the whale represented in the contested sign will be seen as a cachalot unlike the image of a blue whale represented in the earlier mark.

"CatorusWhalus"

It is true that there are minor elements that differ between the signs. For example, the whale in the earlier mark has a more ellipsoidal shape, a rounded tail and a smiling mouth as opposed to the more rectangular shape of the head, the elongated and slightly tilted tail and the straight mouth of the whale represented in the contested sign. However, all these constitute minor elements of secondary importance which the average customer is not likely to identify or remember. The marks were therefore considered visually similar to an average degree.

The signs were also considered conceptually similar since they both convey the concept of a whale.

Assessment of the likelihood of confusion

It follows from the wording of Article 8(1)(b) EUTMR that 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-342/97, Lloyd Schuhfabrik). Therefore, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings, constitutes a likelihood of confusion.

The assessment must be a global one, taking into account the similarity between the marks and goods covered by the marks in question. Accordingly, a lesser degree of similarity between the goods or services in question, may be offset by a greater degree of similarity between the marks, and vice versa (C-39/97, Canon).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The level of attention of the relevant consumer may vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the marks but must place his trust in the imperfect picture of them that he has kept in his mind (T-186/02, BMI Bertollo v OHMI).

By taking into account the identity of the goods, the average degree of visual similarity and the conceptual identity between the signs, the normal level of inherent distinctiveness of the earlier mark and the normal level of attention of the relevant public, the Board concluded that there was indeed a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

Comment

The conclusion is in line with established EUIPO practice. Indeed, as one can also read in the EUIPO Guidelines (here, at §3.4.4.4.), “[w]hen two marks consist of or contain figurative elements and/or shapes and they represent the same or similar objects or ideas, the signs will be conceptually identical or similar.” The following signs were indeed found to be conceptually identical:

Bottom line: same concept means conceptual identity.