Trademark conflicts between two identical trademarks used for identical goods are relatively rare. Most disputes revolve around whether the marks at issue are similar. If the marks are found to be similar and the goods and services compared are identical or similar, the more recent mark infringes the earlier mark provided that there is a likelihood of confusion in the mind of the public.
In order to determine whether the marks are similar or not, the marks must be compared visually, phonetically and conceptually.
Obviously, the visual and phonetic comparison is about how the marks look and how they are pronounced. The brand concept is what it means. What does it evoke or, when it is an image or a form, what does it represent?
If two marks refer to the same or similar concepts, they are conceptually the same/similar. If the marks refer to different concepts, or if only one of the marks refers to a concept, the marks are conceptually different. If no sign has a concept, a conceptual comparison is not possible.
The conceptual comparison may have long been considered the least interesting. This changed somewhat after the PITCH/BASS and PICASSO/PICARO CJEU decisions rendered in 2003 and 2006 respectively.
In PITCH/BASS, the CJEU ruled, for the first time, that conceptual differences can neutralize the visual and phonetic similarities between the compared signs. For such a counter-action to take place, at least one of the signs must have a clear and precise meaning so that the public is able to grasp it immediately.
In the PICARO/PICASSO case, the heirs of the famous painter Pablo Picasso opposed the application of the EUTM of the mark PICARO for Daimler Chrysler cars. According to the CJEU, the mark PICASSO will immediately evoke the name of the famous painter PABLO PICASSO. Although the brands PICARO and PICASSO have no specific meaning in relation to automobiles, the conceptual difference between the marks caused by the link between the earlier mark and the famous painter, compensated for the low visual and phonetic similarity between the marks and, therefore, taking into account also from the high degree of attention of car buyers, there was no risk of confusion.
The neutralization of visual and phonetic similarity can not only take place in the case of marks with different semantic meanings, but also if one of the marks, whether earlier or more recent, refers to the name of a person famous.
A similar decision was issued by the CJEU in 2020 in the case MASSI/MESSI. In this case, the strong visual and phonetic resemblance between these signs has been neutralized by the fact that the younger mark is the name of the most famous football player in the world. Here again, the high reputation of Lionel Messi had a decisive impact on the assessment of the likelihood of confusion. In the same way, the CJEU ruled in favor of the famous singer and actress in an opposition filed by the owner of the earlier mark CYRUS against the mark MILEY CYRUS (2021).
It seems that EUIPO and EU courts only consider younger brand fame in the case of trademarks consisting of the names of famous people, such as Lionel Messi and Miley Cyrus. An interesting question is whether similar arguments can be successfully advanced by proprietors of newer marks with a reputation that are not linked to a famous person, but for example to a football club or a famous clothes.
On November 10, 2021, the General Court delivered a judgment in an opposition case between the marks AC MILAN and MILANboth covering stationery products. AC MILAN maintained that the notoriety of their mark would prevent any risk of confusion on the part of the public since the latter would immediately associate that mark with the famous Italian football club. The General Court rejected this argument, emphasizing that the notoriety of the younger mark could not be taken into account in the assessment of the likelihood of confusion. The famous football club AC MILAN apparently doesn’t have the same status as the world’s most famous footballer.
ZARA/THE DELIZIE ZARA
What about a famous clothing retailer? To defend an opposition to his ZARA brand in food and beverage products and services, owner of the famous clothing retailer ZARAInditex, attempted to convince the Tribunal that the reputation of its ZARA clothing brand should be considered in the conceptual comparison. The opposition was brought by the Italian pasta manufacturer Ffauf Italia on the basis of its trademark registrations and DELIZIE ZARA covering pasta and other food products. Inditex argued that the mark ZARA is well known to the relevant public as referring to the famous retail brand which he owns. Inditex argued that due to the high reputation and uniqueness of the ZARA brand, the public will associate that name with Inditex, even in the context of food and beverage products and services. Inditex felt that the high reputation and uniqueness of the word ZARA and the immediate association between this word and the activity of Inditex resulting from the notoriety, creates a conceptual difference which could thwart the visual and phonetic similarity between the signs. The General Court rejected this argument, pointing out that reputation is relevant in the assessment of a likelihood of confusion, but only when it concerns the reputation of the earlier mark. A possible reputation of the younger brand should however be ignored.
Although the General Court crushed Inditex’s arguments relating to the conceptual differences caused by the notoriety of the ZARA mark, we believe that, in certain circumstances, such an argument may be justified in the case of well-known marks. In this case, it did not work in favor of Inditex that ZARA is a fairly common feminine given name in Spain and Italy. For this reason, although having a reputation, it is difficult to affirm that the ZARA is unique and that consumers will automatically associate this name with Inditex’s textile business, even when it is used in a different area. The fact that Inditex’ ZARA mark has been completely incorporated into the earlier marks also left little room for maneuver.
Incidentally, Inditex appealed, but the Court ruled that the appeal did not raise a significant issue regarding the unity, consistency and development of EU law. Accordingly, Inditex’s request for leave to appeal was dismissed.
Where does this lead us?
In our opinion, in certain circumstances, the notoriety of the more recent mark could play a role in the conceptual comparison of two conflicting marks, also in cases where the contested mark is not the name of a famous person. Imagine the situation where the famous brand ADIDAS wants to launch ice cream products in the EU but encounters a bona fide pre-registration for ODIDOS covering ice cream products. The marks are visually and phonetically similar at least to an average extent and the goods being compared are identical. The two brands do not have a clear meaning, which makes any conceptual comparison difficult. However, the fact that ADIDAS is an extremely well-known brand that makes the public immediately associate ADIDAS ice cream products with the famous ADIDAS sports brand. The conceptual difference caused by the notoriety of the youngest ADIDAS could, in our opinion, thwart the visual and phonetic resemblance and eliminate any risk of confusion between the marks ODIDOS and ADIDAS.
Is there any reason to believe that the principle of neutralization will also be accepted in situations such as the ADIDAS Example?
There is a glimmer of hope coming from the UK. In defense of an opposition to its UK trade mark application filed by Invicta SPA, Prince Harry’s Invictus Games Foundation argued that, given the fame and reputation of Prince Harry, Duke of Sussex, conceptually the mark INVICTUS will automatically evoke royalty and charity. In other words, the notoriety of the young brand INVICTUS (or at least the fact that the mark is linked to Prince Harry) would exclude the possibility of a risk of confusion in the minds of the public.
In the opposition decision of 24 May 2022, the Hearing Officer pointed out that there is no reason why the principle that younger brand awareness can influence the outcome of the risk assessment confusion cannot extend beyond famous people. However, in this case, the argument raised by Invictus was rejected, in part because evidence of the reputation of the INVICTUS rating was insufficient. Marks INVICTA and INVICTUS were considered confusing and the opposition was upheld.
We will closely follow any developments in case law relating to the conceptual comparison of trademarks. To be continued!