Non-distinctive elements, similarity of signs and likelihood of confusion

The relevance of weakly or non-distinctive elements in the comparison of marks and the assessment of the likelihood of confusion, is a hotly debated issue.

The General Court and the Court of Justice of the EU (CJEU) long supported the notion that likelihood of confusion can be based on descriptive and weakly distinctive elements (see e.g. cases T-135/11, T-323/14, and T-212/15). But the direction of the jurisprudential wind seems to have changed.

EUIPO and the General Court are now increasingly reluctant to find a likelihood of confusion on the basis of weakly or even non-distinctive elements. This line of case law is supported by the recent General Court judgment in YAplus DBA Yoga Alliance v EUIPO (case T-443/21).

Background

Swami Vidyanand designated the EU in its International Registration no. 1415321 for the following sign:
 

It covers ‘education; providing of training; entertainment; sporting and cultural activities’ in Nice Class 41.

YAplus DBA Yoga Alliance filed an opposition on the basis of its EU trade mark no. 015378839

registered inter alia for ‘educational services, namely, providing classes, conferences, workshops, and seminars in the field of yoga’ in Nice Class 41. The opposition was based on a likelihood of confusion.

The Opposition Division upheld the opposition. The Board of Appeal annulled this decision and concluded that there was no likelihood of confusion.

The General Court’s decision

The General Court rejected the opponent’s appeal.

Before analysing the similarity of signs and the likelihood of confusion, the General Court held that the word element ‘yoga alliance’, common to both marks, has a very weak distinctive character for the relevant services. The figurative elements in both marks were considered co-dominant to the word elements in the overall impression due to their size.

Turning to the similarity of the signs, the General Court found “clear aesthetic differences”. The words ‘yoga alliance’, common to both marks, were deemed to be of “limited impact” because of their descriptive nature. As such, the judges found only a low degree of visual similarity.

On its face, as the General Court recognized, the phonetic similarity between the marks should be high because of the common words ‘yoga alliance’. However, given the “limited impact” of those descriptive elements, the General Court, agreeing with the Board of Appeal, found only an average degree of phonetic similarity.

The General Court explained in detail that the contested application “refer(s) to the concept of an internationally oriented yoga alliance established in India and enjoying considerable prestige”. As regards the earlier mark, the General Court found that the flower element could evoke the concept of a lotus flower, which is commonly used for yoga and symbolises “purity, enlightenment and spiritual elevation”. The Court concluded that “the earlier mark could be perceived as a yoga alliance or partnership embodying those values and attributes represented by the lotus flower”. On that basis, the judges found an average degree of conceptual similarity.

The General Court considered the distinctive character of the earlier mark to be very low, deriving mainly from the figurative element. Consequently, the judges deemed the scope of protection of the earlier mark to be limited.

In assessing likelihood of confusion, the General Court reminded us--

[…] that the ratio legis of trade mark law is to strike a balance between the interest which the proprietor of a trade mark has in safeguarding its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services, on the other […].

[I]t follows that excessive protection of marks consisting of elements which […] have very weak distinctive character, if any, in relation to the services at issue could adversely affect the attainment of the objectives pursued by trade mark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case.

The General Court held that the visual, phonetic or conceptual aspects of signs do not always have the same weight in the overall assessment of the likelihood of confusion. Here, since the phonetic and conceptual similarities were based exclusively on the common non-distinctive words ‘yoga alliance’, the visual differences had a greater impact.

The judges also cited the Primart decision, where the CJEU held that--

where the earlier trade mark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 does not often lead to a finding that such likelihood exists.

Accordingly, the General Court ruled that there was no likelihood of confusion because of the weak distinctive character of the common words ‘yoga alliance’, and the visual differences between the marks – despite partly identical and partly similar services.

Comment

Refusing the finding of a likelihood of confusion in this case appears justified. The opponent would not have obtained trade mark protection for the words ‘yoga alliance’ in isolation. Consequently, when he registers a mark including these words together with a figurative element that confers the minimum degree of distinctiveness on the overall sign, he should not be able to prevent registration (or even use) of a sign that contains ‘yoga alliance’ together with a figurative element that is different from the opponent’s mark’s figurative element.

Still, it is questionable whether the reasoning of the General Court is in line with the case law of the CJEU. First, the granularity of the Court's analysis of conceptual similarity cited above is difficult to align with the fact that the average consumer normally perceives a mark as a whole and does not analyse its various details (e.g. C-251/95, para. 23).

Further, the CJEU found in Hanson (C‑705/17) that disclaiming rights to non-distinctive elements of a mark would distort the global assessment of the likelihood of confusion because the interdependence between the relevant factors (similarity of signs and goods/services, attention of the public, etc.) is aimed at

bringing the assessment of the likelihood of confusion into line as far as possible with the actual perception of the relevant public. (at para. 47)

Would the General Court’s judgment discussed above not have the same effect as disclaiming protection for the words ‘yoga alliance’? Further, could consumers not assume that the contested trade mark is an Indian sub-organization of the opponent? 

Only the CJEU could shed more light on these questions. Unfortunately, the legislator and the CJEU’s case law made it nearly impossible to get an appeal to the CJEU admitted.