The conceptual comparison – To be or not to be neglected?

Until technology catches up with the law and tactile as well as olfactory marks can be registered, the assessment of the similarity of signs is limited to a visual, phonetic and conceptual comparison. Among these three, the conceptual comparison seems to be the one that plays the least important role. One of the reasons appears to be the difficulty of determining whether signs are conceptually similar. This is particular relevant for figurative marks as the following case shows.

Background

Jaguar Land Rover Limited (‘Jaguar’) owns EU trade marks nos. 12239752, 17879332 and 17879330 protecting the following sign for goods and services in almost all Nice classes:

Puma Energy International SA (‘Puma Energy’) owns International Registration no. 1513313 designating the EU for the following sign covering a broad range of goods and services in classes 1, 4, 9, 16, 19, 35, 36, 37, 39, 43.

Jaguar filed an opposition against Puma Energy’s International Registration asserting a likelihood of confusion.

EUIPO’s decision

The EUIPO denied a likelihood of confusion and rejected the opposition.

For reasons of procedural economy, the Opposition Division assumed that the goods and services are identical. The relevant public was deemed to have an average to high level of attention.

The EUIPO held that the depictions of felines are of average distinctiveness because they are not descriptive, allusive or otherwise weakly distinctive in relation to the relevant goods and services. Jaguar did not claim an increased degree of distinctiveness.

The signs were found to be visually similar to a low degree. Both show a feline but their specific depictions, positions (leaping versus running), orientations and colour arrangements differ. The coincidence in merely generic parts of animals (e.g., legs and tails) may not be given excessive weight since they differ significantly in their details. Jaguar’s feline is more detailed and elaborate while Adenauer’s feline is very simplified and the morphologic features of felines are not clearly, immediately and effortlessly visible. It requires some mental effort in order to recognise and identify a feline.

The Opposition Division found that a phonetic assessment is not possible.

Conceptually, the signs “are similar to at least an average degree, if not identical”. They have an analogous semantic content since each shows a feline.

Turning to the overall assessment of the likelihood of confusion, the Opposition Division found that the visual differences between the signs are clearly perceivable and sufficiently outweigh their similarities. It emphasized that Jaguar cannot rely on the protection of the representation of a type of animal per se but can only preclude registration of a contested sign if the figurative representation itself shows significant similarities.

Comment

Are the signs from Jaguar and Puma Energy conceptually similar or even identical? This depends on the level of abstraction that is considered decisive for the conceptual comparison. Both signs are identical in the sense that they:

· are figurative marks, 

· show an animal, 

· show a feline, 

· show a feline in motion.

They are different and, consequently, only similar in the sense that:

· one is clearly perceivable as a jaguar, the other is an undefined feline,

· the jaguar is jumping, the undefined feline is running,

· the jaguar is jumping to the left, the undefined feline is running to the right.

So, which level of abstraction is the correct threshold to use? This question would have to be answered from the point of view of the relevant public. Therefore, the decisive question might be: Which concept do consumers retain in their imperfect memory? Would they refer to both depictions as ‘felines’? Or to one as a ‘jumping jaguar’ and to the other as ‘a running large cat’?

Or should the conceptual similarity of figurative marks be discarded altogether? The conceptual perception of a sign depends on its visual perception. Unlike pictures and sounds, a concept cannot be perceived as such. You can see a picture and hear a spoken word or sound but you cannot perceive meaning as such. It is the result of the visual and/or phonetic impression and the interpretation of this impression. Therefore, could one make the argument that a conceptual comparison between figurative marks is redundant because it does not provide more insight into the confusability of the signs than the visual comparison? After all, consumers do not tend to describe concepts/meaning but pictures – if they do that at all. The conceptual comparison is nothing more than abstracting the visual impression, trying to put it into categories of meaning, finding the right level of abstraction (see above) and comparing the meanings. The conceptual comparison of figurative signs appears to be a mere derivative of the visual comparison. So what benefit does the conceptual comparison provide over the visual comparison?

An analogy could be drawn with the case law of the General Court as regards the phonetic comparison of figurative signs (e.g. T-696/21 at para. 47): 

[…] it should be noted that a phonetic comparison of the signs at issue is irrelevant in the context of examining the similarity of a purely figurative mark with another mark. A purely figurative mark cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. However, such a description necessarily coincides with either the visual perception or the conceptual perception of the mark concerned. Consequently, it is not necessary to examine separately the phonetic perception of a purely figurative mark and to compare it with the phonetic perception of other marks. 

Similarly, does the conceptual content of a figurative mark necessarily coincide with its visual perception? Be that as it may, it seems that the case law does not give much weight to the conceptual similarity or even identity, so the questions raised above may be more theoretical – yet still meaningful.