EUIPO Fourth Board of Appeal says that “LEGNOLAND” for Class 28 goods is confusingly similar to “LEGO” and “LEGOLAND”

In a recent decision, the EUIPO Fourth Board of appeal did not consider it relevant that the public might understand the contested figurative mark as meaning “land of wood” (“legno” in Italian means “wood”) and that the message conveyed to consumers would be that the goods sold under the contested mark are made of wood. Instead, it confirmed that, when a sign is composed of word and figurative elements, the former are – as a rule – more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than by describing the figurative element (T-460/11, Bürger). As a result, registration of “LEGNOLAND” as an EU trade mark (EUTM) could not proceed due to likelihood of confusion with the opponent’s earlier EUTMS “LEGO” and “LEGOLAND”.

Background

With an application filed in December 2016, Applicant GLOBO sought to register the following figurative sign as an EUTM:

Registration was sought for goods in Class 28 (toys, games, playthings and novelties, sporting articles, and decorations for Christmas trees) of the Nice Classification.

Lego Juris A/S opposed the application under Articles 8(1) and 8(5) of the EU Trade Mark Regulation (EUMTR), claiming that its own earlier EUTMs “LEGO” and “LEGOLAND” enjoy considerable reputation in the EU, and that the applicant’s sign conflicted with its earlier EUTMs also designating goods in Class 28 (games, playthings, and decorations for Christmas trees).

In November 2018, the Opposition Division upheld the opposition based on Article 8(5) EUTMR and found it unnecessary to examine the other ground.

The Appellant appealed and argued before the Fourth Board of Appeal that the sign should proceed to registration since the earlier conflicting marks would be visually, aurally, and conceptually dissimilar.

Parties’ arguments

Visually, the earlier sign consists of the word “LEGO”, while the contested sign is figurative and consists of an irregular rectangle resembling a handmade wooden sign and the word “LEGNOLAND” appearing inside, represented in a highly stylised font in upper-case letters together with a tree depicted over the second “L” letter.

Also, the Italian word “legno” means wood, and the contested trade mark intends to convey to consumers the message that the toys sold under the “LEGNOLAND” brand are all made of wood. This message is emphasized by the graphic element depicting a tree.

Aurally, the earlier mark consists of a four-letter and disyllabic word, LE-GO, while the verbal element in the trade mark applied for is a nine-letter and trisyllabic word, LE-GNO-LAND. They only share three out of nine letters in the same sequence.

Lego submitted that the signs are similar irrespective of how ‘legno’ is understood, which merely concerns Italian-speaking consumers: the tree symbol in the contested mark will simply be perceived as a decoration and consumers who do not speak Italian will not understand the word “legno” as meaning wood, solely because of the depiction of a stylised tree in the contested mark.

The decision

The risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings is what likelihood of confusion is all about. 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). In the case at hand, the analysis was conducted from the perspective of the Danish- and English- speaking public, who is not familiar with the Italian language. The public at large will display an average level of attention with regard to the goods at issue.

Comparison of the signs

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

Visually, the figurative elements in the contested sign are not particular distinctive and have, for that reason, only a secondary position. Although “legno” means wood in Italian, there is nothing to indicate that non-Italian speakers in the EU will understand this meaning. Accordingly, at least for the Danish-speaking and the English-speaking public, this word element in the contested sign has no meaning.

What about the cat-speaking public?

The same could not be said for the word “LAND” which, for at least the Danish-speaking and English-speaking public will at once be understood as a reference to a large sales outlet (R 97/2019-4 Lottoland), or theme park. It would therefore be seen by a significant part of the relevant public as merely denoting the type of sales or services outlet, and as less distinctive than the meaningless “LEGNO”, which would be the most distinctive element in the sign.

Aurally, the phonetic pronunciation would almost identical, at the very least for the Danish-speaking and the English-speaking public.

No conceptual comparison was undertaken since the contested sign has no meaning as a whole for the relevant public.

Global assessment

Lego claimed and duly proved a high level of enhanced distinctiveness of its earlier mark for games and playthings and Globo did not contest this, nor could the Board see any basis for doing so.

Regardless of the enhanced distinctive character of the earlier trade mark with respect to games and playthings, due to the average level of attention of the relevant public, the similarity and identity of the goods and the visual and aural average similarities of the signs, a likelihood of confusion was considered to exists in the sense of Article 8(1)(b) EUTMR for at least the Danish-speaking and English-speaking public for all the contested goods.

Article 8(5) was not taken into account since the Board upheld the Opposition Division’s decision by finding Article 8(1) EUTMR fully applicable to the case at issue.

Comment

While overall the Board’s decision may not be surprising, it is not entirely convincing to consider that Danish- and English-speaking consumers would not recognize the word “legno” at all in connection with wood. In fact, the word “legno” appears routinely used – at least in certain contexts – to signify products made of or with the appearance of wood. If nothing else, decisions like the present one demonstrate once again the importance of defining the characteristics of the relevant public appropriately.