EU General Court dismisses Sony’s ‘Gran Turismo’ appeal

As a computer and video game enthusiast, I could not help but notice that the EU General Court in a recent decision (T-463/20) dismissed Sony’s appeal against an earlier decision of the EUIPO Fourth Board of Appeal, which had upheld the decision of the Opposition Division rejecting Sony’s opposition against an application to register “GT RACING” as an EU trade mark (EUTM). 

The circumstances were such that the General Court considered that, despite the same sequence of word elements “G” and “T” in Sony’s figurative EUTM, their depiction was so stylised that it was unlikely that they would be recognised by the relevant public. 

The decision raises the following question among trade mark holders and practitioners: can trade marks be “too figurative” for their own good?

Background

In 2017, Mr Wai Leong Wong applied to register ‘GT RACING’ as an EUTM.

Registration was sought for goods in Class 18 (leather and imitations of leather and goods made of these materials, namely leather bags, cases, holdalls, rucksacks, wallets, purses, suitcases, trunks, umbrellas and accessories) of the Nice Classification.

Later that year, Sony (the Applicant) filed an opposition, pursuant to Articles 8(1)(b), 8(4), and 8(5) of the EU Trade Mark Regulation (EUTMR), based on – among other things – the following EUTM concerning goods in Classes 9 (computer and video games, audio and video recordings, phonograph records, cassettes, tapes, compact discs, video discs, magnetic data media), 16 (printed matter) and 28 (electronics handheld games):

In 2019, the Opposition Division rejected the opposition. The applicant appealed the decision to the EUIPO Fourth Board of Appeal, which subsequently dismissed the appeal.

The Board considered that the relevant territory was the European Union and comprised the general public with at most an average level of attention. It also considered that the goods were different. As regards the Applicant’s EUTM, the Board found that, since that mark was devoid of any meaning with regard to the goods at issue, it had a normal degree of distinctiveness. The Board, moreover, held that the signs were visually different, and that a phonetic and conceptual comparison was not possible. Since there was no similarity between the signs, the Board concluded that it was not necessary to assess the documents produced by the Applicant in support of its claims relating to the enhanced distinctiveness or the reputation of that mark.

A further appeal to the General Court followed.

The General Court’s considerations

In previous instances the Applicant had based its opposition on six earlier trade marks. Before the Court, it limited the scope of its action to the figurative EUTM above and its earlier registered EUTM ‘GT’, which concerned the same goods as the figurative mark.

Identification of the relevant public

First, the General Court considered that the goods at issue were all aimed at the general public because they were not intended for a specialist public or a limited circle of persons. The goods were not sold on a ‘target market’, but on a ‘general public market’ instead, and were easily accessible to all. Special skills or knowledge were neither essential nor required for their purchase. They were therefore regarded as everyday consumer goods.

Comparison of the signs

Then, the General Court considered that the mark applied for was the word mark “GT RACING” and that one of the earlier EUTM’s relied on by the Applicant was a figurative EUTM. In this regard, the Board had previously found that, if the abstract figurative element, namely 

and 

of the earlier EUTM represented the capital letters ‘G’ and ‘T’, their depiction was so stylised that it was unlikely that they would be recognised as such by the relevant public. The consumer would have to make significant efforts to perceive them as letters. Therefore, the Board had concluded that the signs were visually different, and that a phonetic and conceptual comparison was not possible.

According to the General Court, the curved, vertical, and horizontal lines comprising the earlier EUTM were configured in such a way as to refer to an almost perfect arrangement of elements resting inside each other or next to each other. In those circumstances, consumers would have to engage in a highly imaginative cognitive process in order to perceive such sign as representing the capital letters ‘G’ and ‘T’. That close interconnection of the lines would lead the relevant consumer to perceive it as an abstract and unitary shape rather than as the capital letters ‘G’ and ‘T’. Therefore, the Court considered that the Board had not made any error of assessment in finding that the signs were not visually similar.

The Court then went on to confirm that the signs were not phonetically similar. This was because the earlier EUTM would not be immediately associated, by the relevant public, with a specific and concrete word, letter, or a combination of letters. The General Court also confirmed the now said in relation to the conceptual comparison between the signs, and considered, that since the marks did not convey any message, it was not possible to conclude there was any semantic concept in common between them.

Comparison of the goods

According to case law, when assessing the similarity of the goods/services, all the relevant factors relating to those goods/services should be taken into account. Those factors include, in particular, their nature, intended purpose, method of use, and whether the goods/services are in competition with each other, or whether they are complementary. Other factors may also be considered, such as the distribution channels of the goods concerned (Caventa v OHIM, T‑224/11).

In the present case, the goods were neither of the same nature nor the same purpose, nor were they of the same type nor intended for the same purpose or for the same use. Moreover, because of their different nature and intended purpose, the goods would have normally been manufactured by different undertakings and marketed through different channels. The General Court therefore held that the goods were different.

Article 8(5) of the EUTMR

Finally, the Applicant had attempted to argue that, in light of Article 8(5) of th EUTMR, the Board should have considered a possible link between the signs, and dilution, tarnishing, and/or free-riding, as regards the Applicant’s earlier EU word mark. The General Court considered, however, that the Applicant had not shown that its earlier EU word mark had acquired a reputation for the goods in Class 16 in respect of which it had been registered. Article 8(5) presupposes that several conditions, including proof of reputation, have been satisfied. Failure to satisfy one of those conditions, which are cumulative, is sufficient to render that provision inapplicable.

In light of all the above, the General Court dismissed the action in its entirety.

Comment

When figurative marks with possible word elements and word marks are compared, visually what matters is whether the signs share a significant number of letters in the same position and whether the word element in the figurative sign is highly stylised. Similarity can be established even if the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour. In principle, when the same letters are depicted in the same sequence, any variation in stylisation must be high in order to find visual dissimilarity (see EUIPO Guidelines, section 2 (4)(1)).

What makes this case stand out is the fact that the Applicant – despite the same sequence of word elements “G” and “T” in its figurative mark – was not able to demonstrate that they would be recognised by the relevant public a being just that: “G” and “T”. In this regard, it is important for trade mark holders to bear in mind that overly decorative figurative elements may have an impact on the otherwise identifiable distinctive elements (in this case: the letters “G” and “T”). At least in this case, the trade mark was indeed too figurative, with the result that the relevance (and visibility) of the word elements therein would be greatly reduced. This circumstance, matched to the conclusion regarding the goods at issue, led to excluding the applicability of Article 8(1)(b) of the EUTMR.