A recent ruling of the General Court (Levi Strauss v L&O Hunting Group; T-604/13) appears to have made a dent in the, what we thought to be, fairly established EU case-law with regard to numeral trade marks. Or was this decision just an accidental occurrence?
L&O Hunting had applied for the word mark “101” at OHIM. The CTM application covered goods and services in classes 13, 25 and 28, including “Clothing, footwear, headgear”. Levi Strauss opposed this CTM application in so far as it claimed Class 25 goods.
The opposition was based on Levi Strauss’ earlier CTM registration for “501” covering, amongst other goods, “Clothing, footwear, headgear” in Class 25. The Opponent claimed that there was a likelihood of confusion between the marks in question (Article 8(1)(b) CTMR) and that the mark applied for would take unfair advantage of the reputation of the earlier mark (Article 8(5) CTMR).
OHIM rejected the opposition on the basis that the differences in the two marks were sufficient to avoid any likelihood of confusion, even considering the enhanced distinctive character or the reputation of the earlier 501 mark. In addition, due to the weak distinctive character of both the signs, the existing similarities would be unlikely to evoke the earlier mark to the mind of the relevant consumers. Therefore, the mark applied for would not take unfair advantage of the reputation of the earlier mark.
Levi Strauss appealed the decision. However, the Second Board of Appeal confirmed the ruling of the Opposition Division and rejected the appeal.
In its decision, the Board of Appeal considered that there would be no likelihood of confusion between the marks in question on the basis that:
- Visually, the difference in the first numeral (101 vs 501) and the effect of symmetry given by the mark applied for would have an impact on the overall impression of the marks. These visual differences would outweigh the common characteristics. The Board of Appeal based its assessment on the EU case law pursuant to which the shorter the signs are, the more likely the relevant consumer will be able to perceive the differences between them;
- Phonetically, the degree of phonetic similarity between the two marks would be of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually would visually perceive the mark designating those goods. In any event, the difference in the beginnings of the marks would outweigh the common elements; and
- Conceptually, the marks were globally different.
Given that the Board of Appeal considered the signs to be dissimilar, the claim based on Article 8(5) CTMR was not further examined.
Levi Strauss appealed to the General Court to have the decision of the Second Board of Appeal annulled. Levi Strauss argued that the Board of Appeal had focused too much on the first numeral and ignored the fact that two out of three numerals were identical and placed in the same order and position. The importance given to the elements placed at the beginning of signs did not necessarily lead to the dissimilarity of the marks as such.
The General Court held that the Second Board of Appeal had erred in the finding that there was no likelihood of confusion between the marks 101 and 501. The Court upheld the appeal on the basis that
• Visually, while it is indeed settled case law that, in relation to the clothing industry, the visual aspect has a preponderant role, it cannot be concluded, in this context and without any other specific circumstances, that the dissimilarity between the signs resulting from the difference between one numeral out of three, would necessarily produce an overall different impression between the marks;
While the visual perception of a sign may be more intense with regard to short marks and, therefore, even minor differences cannot be ignored, such differences will not automatically lead to the conclusion that the marks are visually dissimilar;
While the relevant consumers would generally draw their attention to the beginning of the marks, the mere difference in the first numeral of both marks would not, as such and without any other specific characterisation of this numeral, lead to a globally different impression of the signs;
While the marks differ in their structure, namely binary vs symmetrical structures, the Board of Appeal did not bring the evidence that the relevant consumers would clearly perceive this difference in the marks rather than perceiving the marks as two different numbers with two identical numerals out of three.
• Phonetically, while it is not denied that the phonetic difference at the beginning of the marks would be easily perceived by the relevant consumers, the Board of Appeal did not bring the evidence that the overall impression produced by the mark would be dominated by this difference and would outweigh the remaining phonetic identity between the marks.
• Conceptually, the Board of Appeal had erred in finding that the marks present conceptual similarities since numbers do not, as such, convey any concepts.
The General Court concluded that the Board of Appeal had erred in assessing that there was no likelihood of confusion between the marks, allowed the appeal and therefore rejected L&O Hunting’s CTM application for 101, in so far as the application claimed Class 25 goods.
The CTM applicant appears to use its trade mark 101 for a range of rifles (Sauer 101 or S101), so the loss of these Class 25 goods may not be critical to their commercial plans. Further from the state of the UK trade mark and CTM registers, it appears that, if they seek to register either Sauer 101 or S101 for Class 25 goods, they may find themselves untroubled by Levi Strauss.
Having said that, are the two trade marks 101 and 501 really confusingly similar, particularly in an area of commerce (clothing, footwear and headgear) where the visual comparison of trade marks is accepted as paramount? In the writer’s view, the answer should be no. This decision seems to be just one more example of the extremely cautious and conservative approach taken by the (European) General Court when comparing two marks. Is it really believed that the EU purchasing public cannot distinguish between two numbers as different as 101 and 501; one symmetrical (or palindromic), the other neither of these things.
The decisions on the similarity of trade marks that are being made by the European Court are making the clearance of trade marks for use in the EU extremely difficult. In fact, in order to function in any meaningful way, most EU trade mark practitioners are only able to clear marks (for registration and use) in the EU if they ignore much of the precedent cases emanating from the Court and trust (and hope) that they are not one of the few that falls foul of a rogue decision.
This is a deeply unsatisfactory state of affairs and one can only hope that it improves in the future with the European Court, and the other relevant trade mark tribunals, considering matters more in commercial terms rather than in, as at present, rather academic terms.