Some scope of protection please!

This Kat reported here on the narrowing scope of protection of lowly distinctive marks. While they were overprotected in the past, it seems that the pendulum has swung too far in the direction of underprotection. A recent decision from the EUIPO’s Board of Appeal (‘BoA’) seems to confirm this trend.

Background

On 15 October 2021, BIOTROP PARTICIPAÇÕES S.A. (‘BIOTROP’) filed for registration of the following sign for chemicals relating inter alia to fungicides, insecticides and fertilizer (class 1), fungicides, herbicides and insecticides (class 5) and wholesaling and retailing of products for the destruction of harmful animals, fungicides, herbicides, chemicals for agriculture, horticulture and forestry, biological pesticides (class 35).

CIFO S.r.l. filed an opposition on the basis of EU trade mark no. 18224944 ‘BIOTRON’ registered for ‘manures; ameliorants for the soil’ in class 1 and Italian trade mark no. 655123 ‘BIOTRON’ registered for ‘manures; natural organic ameliorants’ in class 1.

The EUIPO’s Opposition Division upheld the opposition for all goods in classes 1 and 5 and most of the services in classes 35. BIOTROP appealed.

The Board of Appeal’s decisions

The BoA annulled the EUIPO’s decision (R1656/2023-2).

It found that the relevant public consists of professionals or gardening enthusiasts with a high level of attention because of the technical nature of the goods, their effect on the health of plants, and potential health risks for the user.

The opposing goods were considered to be averagely similar because they have the same intended purpose, the same trade channels (specialised shops, garden boutiques and centres) and they are in competition with each other or complementary. The goods of the earlier marks in class 1 and the services in class 35 had a low level of similarity because retail services concerning the sale of particular goods are similar to these particular goods. They are complementary, the retail services are generally offered through the same trade channels (where the goods are offered for sale) and they target the same public.

The BoA found that the common element ‘bio’ is lowly or non-distinctive as it refers to the concept of ‘biological’ or ‘organic’, which is descriptive of the goods and services. The elements ‘tron’ and ‘trop’ are meaningless. The weak distinctive character of the element ‘bio’ considerably lessened the similarity arising from this prefix. Rather, the relevant public would focus on the distinctive suffixes ‘trop’ and ‘tron’.

The BoA countered the fact that the signs had the same six letters in the same order at their beginning as follows: 

Furthermore, the mere fact that the marks at issue are composed of the same number of letters, some of which coincide, is not decisive. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (03/05/2023, T-459/22, Laboratorios Ern, SA vs. EUIPO, EU:T:2023:237, § 63).

Also considering the figurative element in the beginning of the contested application (but without assessing its distinctive character), the BoA concluded that the signs have a low degree of visual similarity.

Aurally, the prefix ‘bio’ was deemed to be of less importance because of its weakly distinctive character. The last syllables were considered to be pronounced differently on account of the differing last letters ‘p’ and ‘n’, resulting in a low degree of phonetic similarity.

The degree of conceptual similarity was also considered to be low because of the “little or no distinctive character” of the element ‘bio’.

The BoA concluded “that the signs present a different overall impression”.

The inherent degree of distinctiveness of the earlier mark was found to be average because of the element ‘tron’, which is meaningless and thus distinctive.

The BoA summarized that the goods and services are similar to an average and low degree. The signs are visually, phonetically and conceptually similar to a low degree. The relevant public will show a high level of attention at the time of purchase. The different endings and the figurative element of the contested application are not negligible in the overall impression created by the marks, especially for a public with a higher level of attention. They compensate the visual, phonetic and conceptual similarities. The BoA also mentioned that no excessive weight may be given to non-distinctive elements of a trade mark. For these reasons, a likelihood of confusion was denied.

Comment

The finding of a low degree of visual and phonetic similarity appears debatable. Six out of seven letters are identical, in the same order and at the beginning of the signs. It seems a stretch to argue this away by reference to the limited number of letters in the alphabet, the descriptiveness of the prefix ‘BIO’ and the rather simple graphic in the contested application. How much more similar would the signs have to be in order to find an average or even a high degree of visual and phonetic similarity? The CJEU already held that the scope of protection of a trade mark may not be limited to situations where it is reproduced identically in T.I.M.E. ART v OHIM (C-171/06 P):

It is necessary, in any event, to reject T.I.M.E. ART’s argument that the Court of First Instance infringed Article 8(1)(b) of Regulation No 40/94 in the present case by failing to treat the fact that the earlier national mark is only of weak distinctive character as being of overriding importance. The approach of T.I.M.E. ART in that regard would have the effect of disregarding the factor of the similarity of the marks in favour of that based on the distinctive character of the earlier national mark, which would then be given undue importance. The result would be that where the earlier national mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the signs in question (see, also, to that effect, order of 27 April 2006 in Case C-235/05 P L’Oréal v OHIM [2006] ECR I-57, paragraph 45). Such a result would not, however, be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94.

If the BoA’s reasoning were correct, the scope of protection of the earlier mark would essentially be limited to later marks that fully reproduce it without any additional elements.

It is also interesting to note that the BoA only found a low degree of similarity between retail services for specific goods and the goods themselves. It did not provide any reasoning. The case law on the level of similarity between these goods and services is not consistent. Some judgments from the General Court found an average degree of similarity (e.g. T-844/19 at para. 45; T-638/19 at para. 45). Others agree with the BoA and only acknowledge a low degree (e.g. T-715/13 at para. 33). Neither provide reasons for the specific level of similarity.

The situation in Germany is a bit more nuanced. Retail services for goods and the goods themselves are not automatically deemed similar (as the General Court frequently holds because of their complementary nature and because the services are offered in the same outlets as the goods). They are only considered to be similar if consumers have reasons to believe that the company responsible for the retail services is also responsible for the goods (German Supreme Court, OTTO CAP at paras. 37 et seqq.). This usually requires that large department stores offer not just third party goods but also their own goods under their own private label. This has, for instance, been denied for leather goods in class 18 and retail services therefor (German Patent Court, 26 W (pat) 37/13) because private labels play a limited role in this particular retail sector.