How much visual similarity is necessary?

In an earlier post, this Kat discussed the seemingly narrowing scope of protection of figurative marks in EU trade mark practice. While the EUIPO and General Court rather easily considered figurative signs to be confusingly similar in the past, the pendulum seems to swing too far to the other side now as the following case shows.

Background

Abercrombie & Fitch Europe SAGL (‘A&F’) owns

• International Registration no. 1433913 designating the EU and
• EU trade mark no. 8289886

Both cover inter alia ‘clothing; footwear; headgear’ in class 25.

Adenauer Markengesellschaft UG (‘Adenauer’) applied for registration of EU trade mark no. 18647838 

for goods in classes 18 (including luggage and bags), 24 (including textile goods, and substitutes for textile goods) and 25 (including clothing, footwear, headgear).

A&F filed an opposition asserting a likelihood of confusion (Art. 8(1)(b) EUTMR) and infringement of a trade mark with a reputation (Art. 8(5) EUTMR).

Likelihood of confusion

The Opposition Division denied a likelihood of confusion.

It assumed that the relevant goods are identical. The level of attention of the target public would range from average to high.

In the assessment of the dominant and distinctive elements of the signs, the Opposition Division found that the components andare co-dominant, as they have a similar size and proportion in Adenauer’s sign. Taking the different stylization and orientation of the birds and the additional word elements ‘ADENAUER & CO’ into account, the Opposition Division found a low degree of visual similarity. The EUIPO mentioned that no excessive weight may be given to a coincidence in features that are merely generic for birds.

As regards the conceptual comparison, the Opposition Division held that the signs convey an analogous semantic content, leading to the finding that “the signs are similar to at least an average degree, if not identical”.

A&F claimed that its earlier marks enjoy a high degree of distinctiveness because of the extensive use made thereof. For reasons of procedural economy, the Opposition Division did not assess this claim but proceeded on the basis of an enhanced degree of distinctiveness.

Despite the enhanced degree of distinctiveness, the identity of the goods, the low degree of visual similarity and the average degree of conceptual similarity (if not identity) the Opposition Division denied a likelihood of confusion. In its opinion, the signs differ too much with respect to their orientation, the different shapes of wings, the different circular and semi-circular shapes and, in particular, the additional verbal elements of the contested sign.

Trade mark with a reputation

Based on the evidence submitted, the Opposition Division accepted that A&F’s marks enjoy a reputation for ‘clothing’ in Germany.

As concerns the requirement of a link between the signs, the Opposition Division found that the contest mark’s ‘saddlery, harness, whips; parts and accessories for all the aforesaid goods, included in this class [18]’ had no connection to ‘clothing’. The relevant public would not establish a link.

The remaining goods in class 18 (bags, luggage etc.) were found to be closely related to clothing because of aesthetic complementarity, identical manufacturers and sales channels. ‘Textile goods, and substitutes for textile goods’ in class 24 were considered similar to a high degree to ‘clothing’. The goods in class 25 are identical.

On that basis, the Opposition Division accepted a link for all goods of Adenauer’s mark except for ‘saddlery, harness, whips; parts and accessories for all the aforesaid goods, included in this class’.

The Opposition Division also accepted that the contested mark takes unfair advantage of A&F’s reputation. The use of Adenauer’s mark would stimulate the success of the goods to an extent that is disproportionately high when compared to the size of its promotional investment. Adenauer would inadmissibly benefit from A&F’s investments made so far, without having to provide sustainable financial resources.

Comment

Are the signs really so dissimilar that there is no likelihood of confusion? The figurative elements seem to be highly similar. True, the seagulls are flying in different directions and Adenauer’s seagull has a few more details, like an eye and feathers. However, average consumers do usually not engage in a detailed analysis of the signs. Rather, they must rely on their imperfect recollection of them. Is this imperfect recollection not limited to the figurative elements showing the silhouette of a flying seagull with spread wings in black and white without all the details of Adenauer’s seagull?

The contested mark also includes the words ‘ADENAUER & CO.’. This appears to be one of the main differentiating elements between the signs for the Opposition Division. As the EUIPO rightly mentioned, ‘& Co.’ is often used in business names as an abbreviation of the element ‘and company’ in order to refer to the partner or partners not named in the title of the firm. Therefore, ‘ADENAUER & CO.’ will be perceived as a company name. Should this not lead to the application of the THOMSON LIFE doctrine (discussed here)? This concept applies where the later mark consists of an element that is identical or similar to the earlier sign to which a company name is added. It does not seem to be settled whether the THOMSON LIFE doctrine is applied at the stage of the assessment of the similarity of signs (e.g. T‑54/18 at paras. 93 et seq.) or the likelihood of confusion (e.g. T-569/10 at para. 96 et seq.). In any event, it can lead to a likelihood of confusion because consumers can attribute the origin of the goods or services covered by the composite later mark to the owner of the earlier mark. For instance, the General Court confirmed that there is a likelihood of confusion between the following signs because the eagle retained an independent distinctive position (T‑54/18):

Likewise, if ‘ADENAUER & CO.’ is perceived as a company name, the rather high similarity of the figurative elements and the identity and similarity of the goods should be sufficient to find that consumers could believe that they come from the same undertaking, e.g. that the later mark is just a different version of the earlier sign including the company name.

On a separate note, holding that ‘clothing’ is highly similar to ‘textile goods’ appears to be a stretch, considering that it is consistent case law that they are different (e.g. T-851/19 at paras. 33 et seq.).