Do names convey a clear and specific concept?

Names are a classic type of trade marks. But do they convey a concept that allows a conceptual comparison and can they counteract visual and phonetic similarities between trade marks? These are open issues in EU case law. The General Court dealt with both questions in its decisions in cases T-197/22 and T-198/22 concerning the first name ‘Eva’.

Background

Ioulia and Irene Tseti Pharmaceutical Laboratories SA (‘Tseti’) applied for registration of the following two EU trade marks:

• No. 018127265 
  
  
  (‘first EUTM application’)
• No. 018127266  
  
  (‘second EUTM application’)

Both covered the same goods and services, in class 3 (including ‘toiletries; body cleaning preparations; cleaning preparations’), class 5 (including ‘hygienic preparations and articles; sanitary preparations for medical purposes; feminine hygiene products; absorbent articles for personal hygiene; medicated and sanitising soaps and detergents’), and classes 10 and 35.

Arbora & Ausonia, SL filed an opposition based, inter alia, on the following earlier rights:

• EU trade mark no. 3780947 ‘EVAX’ registered for goods and services in classes 3, 5, 16 and 25. Genuine use had been proven upon the request of Tseti for ‘sanitary towels, panty liners (sanitary), menstruation tampons’;
• Spanish trade mark no. M2601121 ‘EVAX’ registered for goods and services in classes 3, 5, 16, 18, 21, 24 and 44. Genuine use had been proven upon the request of Tseti for ‘hygienic pads, feminine hygiene pads, pantiliners (hygienic products), menstruation tampons’.

The Opposition Division of the EUIPO partially upheld the opposition. Upon appeal by Tseti, the Board of Appeal (‘BoA’) found the opposition to be justified for the following goods:

• Class 3: ‘Toiletries; body cleaning preparations; cleaning preparations’;
• Class 5: ‘Hygienic preparations and articles; sanitary preparations for medical purposes; feminine hygiene products; absorbent articles for personal hygiene; medicated and sanitising soaps and detergents’.

Tseti appealed to the General Court.

The General Court’s decision

The General Court confirmed the BoA’s finding that some of the goods are identical and some are similar to a below average degree.

Regarding the similarity of the signs, the Court upheld the BoA’s finding that the dominant elements of the earlier mark
 

were the words „eva intima“. However, the same is not true for the mark

.

The figurative element below the word ‘intima’ would be understood as a stylised depiction of a female belly. The BoA held that this element is descriptive and not dominant.

The General Court disagreed. While descriptive and, therefore, weakly distinctive elements are not generally regarded as dominant, they can dominate the overall impression if they make an impression on consumers and are remembered by them, in particular, because of their position or size. The figurative element of a female belly is considerably larger than the other elements. Also, according to the Court, it is easy to grasp and memorise and thus shapes the overall impression of the second EUTM application.

Visually, the first EUTM application has an average degree and the second EUTM a low degree of visual similarity to the earlier signs ‘EVAX’.

Phonetically, the signs are similar to an average degree. The most distinctive elements ‘EVAX’ and ‘EVA’ are pronounced similarly. The letter ‘X’ in the earlier marks is not a particularly striking consonant capable of substantially influencing the phonetic impression.

Conceptually, the earlier marks ‘EVAX’ consist of a fanciful term. The contested EUTM applications on the other hand could be understood as referring to the first name ‘Eva’. Unlike trade marks which consist of a first and a family name, marks consisting only of a first name convey a concept. Therefore, the signs are found to be conceptually different.

The General Court rejected Tseti’s argument that the meaning of the word ‘eva’ in the contested applications neutralised the visual and phonetic similarities with the earlier marks. According to case law, if at least one of the signs has a clear and specific meaning, which can be grasped immediately by the relevant public, the signs are considered to produce a different overall impression, despite visual or phonetic similarity. The word ‘eva’, however, was not considered to be understood in a clear and uniform manner. As the judges wrote:

While one part of the public understands it as a common female first name in the same way as other female first names, another part of the public understands it as alluding to the first woman on Earth (according to the Bible).

Turning to the overall assessment of the likelihood of confusion, the General Court found that the second EUTM application was sufficiently distinct from the earlier marks so that, despite identical goods and an average degree of inherent distinctiveness, the relevant public would not confuse the marks.

As regards the first EUTM application, the General Court found that there was a likelihood of confusion for identical goods but not for the goods, which only had a below average degree of similarity with the earlier marks’ goods.

Comment

The General Court’s judgment touches on two interesting points:

1. Do names convey a concept so that they can be compared conceptually?

The chambers of the General Court are divided on this issue. The positions have been summarised in case T-716/21 (at paras. 69 and 70).

The issue with names of (non-famous) persons seems to be that they do not convey a meaning that can be explained or paraphrased. E.g. one can explain what a bicycle is and how it is different from a motorbike but one cannot (on the basis of common knowledge) explain the meaning of the name ‘Olivia’ and how it is different from ‘Sophia’. However, in this Kat’s opinion, they still bring to mind a concept, namely “a word or words that a particular person, animal, place or thing is known by” (as name is defined in the Oxford Learner’s Dictionary). The situation is similar with colours. Try to explain what red looks like and how it is different from the colour green. While this seems impossible, colours are still considered to convey a concept (e.g. T-803/14 at para. 55).

2. Can a name, that is present in one of the marks, neutralise visual and/or phonetic similarities?

The EU courts accepted a neutralisation for names of well-known people, such as Picasso and Messi. Should the same not apply to all names, which are understood by the relevant public as such? The rationale of the neutralisation of visual and phonetic similarities by conceptual differences is that consumers will easily remember one of the signs and distinguish it from the other because of the different meaning. Common names such as Eva can be remembered without much effort and allow to differentiate them from fantasy trade marks such as ‘EVAX’. The fact that the name Eva might evoke different meanings for different people (female first name vs. the first woman on Earth (according to the Bible)) does not seem to be decisive, unless there is a non-insignificant part of the public, which is unfamiliar with the name.