Meatless in Paris

When an earlier sign consists of two words and the later mark consists of the same two words but in reversed order, the German Federal Patent Court calls this an ‘anagrammatic sound rotation’ (‘anagrammatische Klangrotation’).

The rationale is that consumers are unlikely to remember the order of words due to their imperfect recollection (e.g. case 29 W (pat) 47/16).

In two recent decisions, the General Court and the Board of Appeal (‘BoA’) of the European Union Intellectual Property Office (‘EUIPO’) found instead that the inversion of words does not lead a likelihood of confusion when the words have a low degree of distinctiveness.

Paris Bar v Bar Paris

Background

On 28 June 2019, Superstudio 21 GmbH filed an application for registration of EU trade mark no. 018088718 for the following sign:

It covered foodstuffs in classes 29 and 30 as well as restaurant services in class 43.

Kantstraße Paris Bar GmbH filed an opposition based on German trade mark no. 39739738 for the following sign:

This trade mark covered provision of food and drink as well as accommodation services in class 43.

The EUIPO’s Opposition Division upheld the opposition. The BoA annulled the decision and rejected the opposition.

The General Court’s decision

The General Court dismissed the opponent’s appeal (case T-117/23).

Since the earlier right was a German trade mark, the relevant German public was considered to have an average level of attention and the goods and services were deemed identical or similar.

As regards the similarity of the signs and their distinctive and dominant elements, the General Court held that the relevant consumers would understand the signs to denote a bar named ‘Paris’, suggesting that the bar is decorated in a particular Parisian style. The city of Paris enjoys a worldwide reputation for its gastronomy and culture. The vagueness of the concept of a Parisian-style bar does not prevent the words ‘Paris Bar’ and ‘Bar Paris’ from being descriptive.

Therefore, the judges found the word elements of both signs to be lowly distinctive for all goods and services. None of them dominated the overall impression of the marks.

The figurative element in the contested application representing a Gallic cock – a symbol closely connected with France and Paris – was deemed to be as distinctive and dominant as the word elements.

On that basis, the General Court confirmed the BoA’s finding that the signs are visually similar to a low degree on account of the inversed order of the words, their weak distinctiveness and the additional graphical elements of the contested application.

Phonetically, the General Court considered the signs to be highly similar, unlike the BoA, which found only an average degree. The word elements will be pronounced identically. The reversed order of the words does not result in a different meaning. Taking the imperfect recollection of consumers into account, the order of the words does not play a decisive role.

The conceptual similarity could be considered high due to the common concept of a Parisian-style bar. However, the low distinctiveness of the word elements caused the General Court to hold that the conceptual similarity has a very limited impact on the likelihood of confusion without stating the level of conceptual similarity.

The Court confirmed the BoA’s finding that the inherent distinctiveness of the earlier mark is very low. The opponent’s claim of increased distinctiveness due to intensive use was rejected because of insufficient evidence relating to one single bar in Berlin.

As regards the likelihood of confusion, the General Court took the marketing conditions of the specific goods and services into account. The judges agreed with the opponent that oral recommendations and radio ads are important for marketing foodstuffs and restaurant services. Likewise, restaurant and travel guides as well as newspaper articles do not necessarily reproduce figurative marks but only their word elements. However, the judges found that, when buying foodstuffs and visiting restaurants, consumers will perceive the marks predominately visually.

Further, the visual similarities are based on the very lowly distinctive word elements, which is why visual differences between the signs play a more important role. These differences allow the relevant public to distinguish the signs. For these reasons, the General Court denied a likelihood of confusion.

ZERO MEAT v MEAT ZERO

Background

On 29 September 2021, CPF Food and Beverage Co., Ltd. (‘CPF’) applied for EU trade mark no. 018568780 for various meat substitutes in class 29 and the following sign:

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG (‘Norma’) filed an opposition on the basis of International Registration no. 1546416 (designating the Czech Republic, France and Austria) and German trade mark no. 302020102414 for various foodstuffs in classes 29 and 30 both covering the following sign:

The Opposition Division of the EUIPO upheld the opposition because of a likelihood of confusion. CPF appealed.

The Board of Appeal’s decision

The BoA annulled the EUIPO’s decision and rejected the opposition (case R 2052/2023-2).

The relevant public consists of the general public with an average level of attention. Meat substitutes were found to be relatively inexpensive and purchased on a daily basis.

Geographically, the relevant public is composed of the average consumers of the Czech Republic, Germany, France and Austria.

The BoA considered the goods to be identical.

With respect to the distinctive and dominant elements of the signs, the BoA found that the words ‘zero’ and ‘meat’ are part of the basic English vocabulary, which will be understood throughout the EU. The BoA supported this argument with respect to ‘meat’ by reference to the Cambridge Learner’s Dictionary, in which this term is classified under the A1 (Basic User) level of English, which corresponds to the basic level of English according to the Common European Framework of Reference for Languages (CEFR). Since ‘zero’ and ‘meat’ are descriptive for the relevant goods, they are not distinctive and dominant elements of the signs.

The BoA considered the colour green used in both marks to allude to the ecological or environmentally friendly nature of the products. The figurative elements in both marks were also not considered as particularly striking. Thus, the verbal and figurative elements contribute equally to the overall impression.

Visually, the BoA found the signs to be similar to a low degree. The earlier mark is made up of one word, the contested application has two words and the additional numeral ‘0’. Further, the (weakly distinctive) words are in reverse order. The BoA held that the figurative elements also contribute to a different overall impression. Even the shades of green in the signs were considered to be very different.

Phonetically, the BoA held that the figurative elements and the additional number in the contested application will not be pronounced. The identical words ‘meat’ and ‘zero’ were considered to have a limited impact because of their descriptiveness. In addition, consumers were deemed to be aware of the fact that the identical verbal elements do not appear in the same order. The BoA concluded that the phonetic similarity is slightly below average.

Conceptually, both signs refer to products that are free of meat and ecological or environmentally friendly. Because of the weak distinctiveness of this concept for the relevant goods, the degree of conceptual similarity was deemed to be low.

The BoA held that the inherent distinctiveness of the earlier marks is below average on account of the descriptiveness of the words and because the figurative elements are not particularly striking.

In the assessment of the likelihood of confusion, the BoA found that, due to the non-distinctive character of ‘ZERO’ and ‘MEAT’, the attention of the relevant public would focus more on the elements that differentiate the signs at issue, namely the different layout, the different shades of green, the graphic components and the stylized numeral ‘0’ in the contested sign.

The BoA also mentioned that it would be against the rationale of the EUTMR to grant excessive protection over non-distinctive elements.

Moreover, the BoA considered the visual similarity to be more important because food products are normally purchased directly in supermarkets where consumers lose little time between successive purchases and often do not read all the information on the various products, letting themselves be guided more by the overall visual impression produced by the labels or packaging.

For these reasons and despite the identical goods, the BoA excluded a likelihood of confusion.

Comment

Even though the reasoning of the decisions differs to some extent, the result is the same: Trade marks consisting of non-distinctive or lowly distinctive elements have a very limited scope of protection. The distinctiveness of the earlier mark becomes the decisive factor in the overall assessment of the likelihood of confusion.

As I discussed in previous posts (here and here), giving the factor ‘distinctiveness of the earlier sign’ that much weight does not appear to be in line with the case of the Court of Justice of the European Union (‘CJEU’). This court should be given the opportunity to confirm or correct its case law in this respect. Since 2019, this is not as easy as it used to be because appellants need to show that an appeal to the CEJU raises an issue that is significant with respect to the unity, consistency or development of the EU law (Art. 58a of the Statute of the CJEU, Artt. 170a, 170b of the Rules of Procedure of the CJEU). The relevance of the earlier mark’s level of distinctiveness in the overall assessment of the likelihood of confusion and the potential deviation from the CJEU’s case law might just be sufficient to fulfil these conditions.

The picture was created with Image Creator from Microsoft Designer.