General Court allows registration of CORNEREYE ... and an argument based on Brexit (briefly) appears

In light of the Court of Justice of the European Union's 3-week court hiatus, this Kat has decided to take a look back at some of the March cases that passed by, starting with case T-688/18, where the General Court (GC) not only overturned the decision of the EUIPO Board of Appeal (BoA), but also (albeit briefly) came face-to-face with an order request based on Brexit. The judgment considered whether a likelihood of confusion could be found (on the basis of Article 8(1)(b) of Regulation 2017/1001) between the mark applied for, CORNEREYE, and earlier trade mark BACKEYE.

Background

When you are trying to find a suitable indoor hobby...
Credit: me :)

In March 2016, Exploitatiemaatschappij De Berghaaf BV (the applicant) filed applications to the European Union Intellectual Property Office (EUIPO) to register the word mark 'CORNEREYE' for class 9 goods ("Cameras; monitors; apparatus for the recording and reproduction of images; data-processing apparatus").

Following publication of the application, in June 2016, Brigade Electronics plc (the intervener) filed a notice of opposition to the registration, on the basis of its earlier EU word trade mark 'BACKEYE', also covering goods in class 9 ("Closed circuit television apparatus comprising television cameras and television monitors, all for mounting on vehicles or mobile apparatus, and for use in assisting drivers in manoevring, parts and fittings for the aforementioned goods; all goods in Class 9").

In its decision, the BoA found that there was a low to average degree of similarity from a visual and phonetic standpoint. From a conceptual standpoint, the signs at issue were similar to an average degree. This, coupled with the fact that the earlier mark had a high degree of distinctiveness in light of the extensive use of the mark and its reputation (particularly in the UK) led to the conclusion that there was a likelihood of confusion on the part of the relevant public.

In its appeal, the applicant made two claims: 

• First, that the decision should be annulled on the basis of: (i) infringement of Article 95(1) of Regulation 2017/1001 (this argument was rejected, and will not be addressed here); and (ii) infringement of Article 8(1)(b) of the same Regulation; or
• For the proceedings to be stayed, until the EU Treaty and the FEU Treaty ceased to apply to the UK, or until the UK effectively revoked its notification of withdrawal from the EU and stayed in the EU.

GC Judgment

Before moving into the substantive points, the GC began by reiterating some of the undisputed points set out by the BoA. First, the relevant public consisted of the general public of the EU and of professionals with specific knowledge or expertise in the field of motor vehicles and, in particular, of trucks, with the public's level of attention found to be average to high. Second, that the goods at issue were identical.

When comparing the signs from a visual and phonetic perspective, the signs coincided only in their final letters, 'eye'. Other factors would also have to be considered: first, how the first part of a trade mark would have greater visual impact and would be stressed more when pronounced; and, secondly, how the semantic similarity of 'back' and 'corner' could not be taken into account for such a visual and phonetic comparison. The GC found that there was a lack of conceptual similarity between 'back' and 'corner', despite both terms being capable of referring to the position of a camera on a vehicle or to the concept of the field of vision.

As such, the mere presence of the common element 'eye' in both marks would not in itself make it possible to find similarity between the two marks. Such an element would be perceived by the relevant public "as referring directly and specifically to the function of the goods at issue, which [was] to facilitate or improve vision, whilst driving, by means of cameras and monitors". Thus, it would be descriptive of the essential characteristics of the goods, further lending to a conclusion of no similarity between the two marks, and consequently no likelihood of confusion.

Such a finding would not be affected either by the high degree of acquired distinctiveness attained by the mark through its use in the UK, which had nonetheless prompted an overall assessment of the likelihood of confusion. Ultimately, the differences between the signs visually, phonetically and conceptually, as well as the descriptive nature of the elements of the signs and signs overall should have been enough for the BoA to find to likelihood of confusion on the part of the relevant public.

Comment

Whilst the argument of a decision based on whether the UK remained or left the EU is no longer viable due to the decision back in January (was it only just over 2 months ago...), it does act as a reminder of the unusual circumstances that Brexit poses. The lack of response to the Brexit argument, reduced only to a brief statement that the President of the First Chamber of the General Court had decided not to grant the request for a stay of proceedings on that basis only highlights the uncertainty the whole situation is inevitably going to create in the future.

This Kat will be keeping an eye out for further decisions where Brexit is discussed!