General Court says that ‘MARK’ and ‘MARQ’ are confusingly similar despite low degree of similarity between respective goods

In a recent decision, the General Court upheld the EUIPO Fifth Board of Appeal’s (the Board) findings regarding the likelihood of confusion between the two signs ‘MARK’ and ‘MARQ’.

The General Court considered that there was a low degree of similarity between the goods in Class 11 covered by the Applicant’s mark and the ‘lighting mixers’ in Class 9 covered by the earlier mark. In relation to the comparison of the two signs, the fact that the sole word element ‘MARQ’ in the Applicant’s mark was almost identical to the dominant visual element of the earlier figurative mark, namely the word element ‘MARK’, was sufficient to establish a visual similarity to an average degree. The signs were also considered phonetically identical without any conceptual similarity.

Background

In September 2015, inMusic Brands Inc (the Applicant), applied to register ‘MARQ’ as an EU trade mark (EUTM).

Registration was granted in 2016 for goods in Classes 9 (apparatus and instruments for conducting, switching, transforming, accumulating, regulating and/or controlling electricity, apparatus and instruments for recording, producing, editing, processing, transmission and/or reproduction of sound and/or images) and 11 (electric lights, electric lighting fixtures, flashing strobe light apparatus) of the Nice Classification.

In December 2016, Equipson SA filed an application with EUIPO for a declaration of invalidity of the contested mark based on its earlier Spanish and international figurative marks, covering goods in Class 9 (speakers, amplifiers, sound and lighting mixers):

In August 2018, the Cancellation Division upheld the application of invalidity in respect of certain goods in Class 9 and in respect of all the goods in Class 11.

The Applicant subsequently launched an appeal to the Board, which dismissed the action in July 2019. The Board found that the scope was limited to goods in Class 11 and that, consequently, the decision of the Cancellation Division, which declared the contested mark invalid for some of the goods in Class 9, had become final.

The Applicant appealed the Board’s decision to the General Court.

The General Court’s decision

The General Court first noted that, according to settled case law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, by taking into account the relevant public’s perception of the signs and goods or services in question and all factors relevant to the circumstances of the case, 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).

The relevant territory was the territory covered by the international registration, namely the Benelux countries, Germany, France, Italy, Portugal, and the United Kingdom.

The General Court then observed that, while it is true that some of those goods are aimed primarily at professionals in the event sector, a large portion of those goods, such as speakers, amplifiers, electrical cables and headphones, are intended for both the general public and professional consumers.

As regards the level of attention, the General Court recalled that, where the relevant public consists of consumers who are part of the general public and of professionals, the section of the public with the lowest level of attention must be taken into account. However, since some of the goods covered by the marks are aimed primarily at a public of professionals, the level of attention of that public (with regard to those goods) will be higher than that of the general public (T-449/15, Satkirit Holdings v OHIM).

Comparison of the goods

As regards the assessment of lighting mixers in Class 9 covered by the earlier mark and the goods in Class 11 covered by the Applicant’s mark, the General Court observed that it was common ground that those mixers are used by professional consumers in conjunction with lighting fixtures in order to be able to control several fixtures simultaneously and to adjust their effects in the context of shows, theatre productions, concerts and other events.

Furthermore, there was a complementary relationship between the goods covered by the Applicant’s mark in Class 11 and the sound and lighting mixers in Class 9 covered by the earlier mark. Goods are considered complementary when there is a close connection between them, in the sense that one is indispensable for the use of the other in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking (T-316/07, Commercy v OHIM).

In light of the above, the General Court held that there was a low degree of similarity between the goods in Class 11 covered by the Applicant’s mark and the ‘lighting mixers’ in Class 9 covered by the earlier mark.

Comparison of the signs

In considering the question whether one or more elements are likely to dominate the image of the earlier mark, the General Court noted, that, in so far as it is identified as representing the letter ‘m’, the figurative element of that mark would be regarded as a mere repetition of the initial capital letter of the word element ‘mark’, with the result that the consumer would perceive it as a decorative element, which enhances the presence of that word element. Furthermore, the size of that element was greater than that of the figurative element of that mark. As a result, the word element ‘MARK’ was considered dominant in the earlier mark.

In relation to the distinctive character of the elements comprising the earlier mark, the General Court considered that, where a trade mark consists of verbal and figurative elements, the former are, in principle, more distinctive than the latter. This is because the average consumer will more easily refer to the goods or services in question by quoting the name of the mark than by describing the figurative element of that mark. Consequently, the word element of the earlier mark was not considered less distinctive than its figurative element.

Visual similarity

Although the signs differed in their final letters, namely ‘q’ in the Applicant’s mark and ‘k’ in the earlier mark and in the figurative element placed before the word element of the earlier mark, the General Court considered that they nevertheless displayed significant visual similarities. In particular, both signs had the same length and coincided in most of their word elements, that is to say, three of the four letters were identical and placed in the same order. In other words, the difference between the word elements ‘MARK’ and ‘MARQ’ was solely in the last letter. Thus, the initial parts of those word elements, which is the part to which consumers normally attach more importance, were identical.

Furthermore, the font used for the word element of the earlier figurative mark did not have any particular stylisation capable of differentiating it from the word element of the contested mark.

Therefore, the fact that the sole word element ‘MARQ’ in the Applicant’s mark was almost identical to the dominant visual element of the earlier mark, namely the word element ‘MARK’, was sufficient to establish an average visual similarity between the two signs.

As regards to the phonetic similarity, the General Court reasoned that it was unlikely that the stylised figurative element of the earlier mark would be perceived by the relevant public as an element representing the letter ‘m’. The Applicant’s mark would therefore be pronounced as a single syllable. The signs were composed of the same number of syllables and regarded as being phonetically identical.

As regards to the conceptual similarity, the General Court reasoned that the signs were conceptually different, since the earlier mark had a specific meaning, whereas the Applicant’s mark had no meaning.

Global assessment of likelihood of confusion

A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (C-39/97, Canon).

In light of all the considerations above and, in particular, the average inherent distinctiveness of the earlier mark, the General Court concluded that there was a likelihood of confusion between the two marks in respect of all goods in Class 11.

Comment

This decision is a textbook example (and reminder) of how the assessment of confusing similarities is to be conducted. It also illustrates that, at times, the lack of significant stylisation in one’s own figurative mark may come in handy.