Does 'Delta' really denote distinctiveness? The General Court gives its judgment in Case T-387/18

Delta Sport's logo

The General Court of the EU ('the Court') recently (13 February 2020) issued its judgment in Case T-387/18 Delta-Sport Handelskontor GmbH v European Union Intellectual Property Office (EUIPO). 

Background

The case concerned an application to register a figurative trade mark in relation to Classes 9, 10, 18, 20, 25 and 28 of goods as identified in the Nice Agreement. Delta Enterprise Corp. filed a notice of opposition on 23 April 2016 on the basis of its own trade mark in respect of goods in Classes 9, 18, 20, 25 and 28.

Delta Enterprise Corp.'s
earlier trade mark

The Opposition Division of the EUIPO rejected Delta Sport's application in respect of some of the goods in classes 20 and 28 on 6 July 2017, which Delta Sport sought to appeal. On 17 April 2018, the Fifth Board of Appeal rejected the appeal in its entirety. A further appeal followed.


Issues

Procedure

In rejecting the applicant's third head of appeal - which had sought the Court to take 'any other measures that it may consider appropriate - the Court emphasised that the clarity and precision of each head of claim are of utmost importance. It is not open to applicants to seek un-enumerated heads of claim as an insurance option, in order to safeguard 'legal certainty and a sound administration of justice. In respect of the intervener's second head of claim, seeking a confirmatory judgment, the Court again stated that its role in this area is to conduct judicial review of decisions of the Boards of Appeal. 

Substance
The applicant alleged infringement of Article 8(1)(b) of Regulation 2017/1001, claiming that:

the Board of Appeal (i) erred in its assessment as to whether the goods in question are similar, (ii) erroneously found that the mark applied for, on the one hand, and the earlier trade marks, on the other, are visually, phonetically and conceptually similar, (iii) erred in its assessment as to whether the word ‘delta’ is distinctive in character’, (iv) erred in finding that the earlier marks have a normal degree of distinctiveness, and (v) erred in its assessment of the likelihood of confusion.

That provision prevents registration of a mark where there is opposition from the proprietor of an earlier mark and there is a likelihood of confusion between that earlier mark and the mark applied for in the territory in which the earlier mark is protected. This goes to the core function of trade marks as an indicator of origin, because a risk that the public would believe the goods or services covered by the respective marks come from the same or economically-linked undertakings is sufficient to create a likelihood of confusion. The Court identified a number of factors to be considered in a holistic assessment of that risk in light of the relevant public's perception.

Likelihood of confusion includes two cumulative conditions: that both the marks at issue are identical or similar and that the goods or services covered are identical or similar. Even if there is only a low degree of similarity between the goods or services, that could be weighed against a high degree of similarity between the marks - or vice versa. Taken together with the condition that consumer perception may be assessed within only a part of the European Union for an EU trade mark to be refused registration, this cumulative, holistic assessment may constitute a relatively high bar for the applicant for a new mark to clear.

(a) Goods
The Court reaffirmed the settled average consumer who is reasonably well informed and reasonably observant and circumspect test when assessing the actual likelihood of confusion. The average consumer may be more or less attentive depending on the category of goods or services. Like the conditions identified above, this is far from a mechanical assessment.

The relevant public here could be identified as Spanish-speaking consumers throughout the EU (including Spain), with the caveat that if there was a risk of confusion only in one Member State (Spain, the most likely Member State for any risk of confusion to arise), then the application for registration should be refused.

The Court moved to a series of specific comparisons of the types of goods identified within Classes 20 and 28; for instance, it drew on assessments about the classes of consumers who might buy both sleeping bags and mattresses for travel or activities to state that it is sufficient if similarity between goods is found in relation to one of the marks. 

At [71], it again took the view that the applicant's argument had been insufficiently 'concrete' to displace the Board of Appeal's assessment in relation to certain goods in Class 20. Like its procedural findings above, this indicates that applications to the General Court should be as clear and precise as possible both in terms of identifying heads of appeal and argumentation.

(b) Signs
The Court applied the settled test of a global assessment based on the overall impression given by the signs visually, phonetically or conceptually (bearing in mind distinctive and dominant elements) to the average consumer of the goods or services in question. This includes the general position that two marks will be similar if they are at least partially identical in respect of at least one aspect. If one mark consists of the earlier mark plus an additional word, that will indicate a level of similarity between the marks.

Whether the common word element 'delta' supports the finding of an average degree of visual, phonetic and conceptual similarity by the Board of Appeal was therefore the next issue considered by the Court. The Court noted that, if the common element is one which is so widely used that it has lost distinctiveness for that class of goods, or if it is descriptive or weakly distinctive, it is unlikely that there will be a real risk of confusion in the public mind such that the goods will be perceived as coming from the same source.

The Court determined that the applicant's evidence concerning undertakings active in various countries or internationally - without evidence of how the relevant public perceives the mark - was not sufficient to prove their argument that the word 'delta' had become 'almost generic' for the goods at issue in the Spanish-speaking market. The importance of clarity and precision is again underscored.

Similarly, the argument that the word 'delta' could denote the symbol delta, conferring a laudatory character because of its mathematical meaning of 'difference', was rejected because there was no evidence that a significant part of the public would actually understand this reference.

The additional word elements 'colchon' (colchón, mattress) and 'sport' in respect of the earlier Spanish mark and the mark applied for, respectively, were each deemed not to be distinctive in relation to the relevant categories of goods. Similarly, the small heart contained within the earlier mark was not prominent or distinctive enough to displace the word 'delta' as the dominant element of that mark. Moreover, because of the low distinctiveness of the subsidiary word element 'colchon' in the earlier Spanish mark, consumers would focus their attention on the distinctive element, i.e. 'delta'.

The Court stated that the mark applied for fell within the excessively simple category because it is made up of simple colours and geometric shapes. It would therefore not be understood as a trade mark by consumers unless it had acquired distinctiveness through use (which is not at issue here).

Therefore, 'delta' was assessed as having an average degree of distinctiveness and 'sport' as having a weak or average degree of distinctiveness (depending on the class of goods). In addition, 'delta' is the part of the mark to which consumers would pay more attention because it is placed at the start. The earlier marks were assessed as having a normal inherent distinctive character.

An average degree of phonetic similarity between the earlier EU mark and the mark applied for was found, and a weak degree between the earlier Spanish mark and the mark applied for due to the qualification added by the words 'colchon' and 'sport' respectively. The Court also supported the Board of Appeal's finding that there was an average conceptual similarity between the marks.

The Court therefore affirmed the likelihood of confusion or association in the imperfect memory of the relevant consumers assessed by the Board of Appeal, with the action being dismissed in its entirety.