General Court: Conceptual identity in different languages insufficient for likelihood of confusion

The EU has 24 official languages and there is a significant number of people who speak further languages like Russian. This raises the question if signs are confusingly similar where one is the translation of the other. In a recent judgment, the General Court dealt with trade marks sharing the words ‘may tea’ in English and Russian and denied a likelihood of confusion.

Background

Schweppes International Ltd (‘Schweppes’) obtained registration of the following four EU figurative trade marks:

The trade marks cover ‘flavoured tea-based beverages (non medicinal); flavoured ice tea (non medicinal)’ in class 30 and ‘non-alcoholic tea flavoured beverages [or sodas]’ in class 32.

The company May OOO (‘May’) owns International Registration no. 678625 ‘майский чай’ (Russian for ‘may tea’) designating the Czech Republic, Germany, France, Latvia, Poland and Slovakia for ‘tea’ in class 30. May filed invalidity applications against Schweppes’ trade marks claiming a likelihood of confusion.

The Cancellation Division of the European Union Intellectual Property Office (‘EUIPO’) rejected May’s applications. The EUIPO’s Board of Appeal (‘BoA’) upheld May’s appeal and declared Schweppes’ trade marks invalid.

Schweppes appealed to the General Court.

The General Court’s decision

The General Court upheld the appeal and annulled the BoA’s decision.

The judges confirmed the BoA’s finding that the goods targeted the general public with an average level of attention. Further, the goods were partly identical and partly similar.

1. Similarity of the signs

As regards the distinctive and dominant elements of the marks in question, the Court agreed with the BoA that the figurative elements in the contested trade marks were either purely decorative and devoid of distinctive character or weakly distinctive. Consumers would more readily refer to the goods at issue by quoting the clearly visible word elements than by describing their figurative elements. Therefore, the word elements of the contested marks were more important.

The judges considered the word ‘tea’ to be descriptive and the word ‘may’ distinctive. This also applied to the earlier mark’s elements ‘майский’ and ‘чай’.

Turning to the assessment of the similarity of the signs, the Court deemed the signs to be visually dissimilar.

Phonetically, the BoA found that the earlier mark would be pronounced ‘mai – skii – tchai’ and the word elements of the later marks ‘mei – tii’. This resulted in a low degree of phonetic similarity at most.

May argued that the signs were highly similar on account of their common element ‘mai’ and the descriptiveness of the words ‘tchai’ (meaning ‘tea’). The judges found that the signs only coincide in the letter ‘M’. The rest of the signs would be pronounced differently due to the different pronunciation rules of English and Russian. Further, the signs are of different length. The Court agreed that the signs have, at best, a low degree of phonetic similarity.

Conceptually, the BoA focused its assessment on the perception of the Latvian public, which understands English and Russian and considered the signs to be conceptually identical.

The General Court held that linguistic differences between signs cannot, in themselves, suffice to exclude a conceptual similarity. However, the need for a translation can, depending on, inter alia, the relevant public’s knowledge of languages, the degree of closeness between the languages concerned and the actual terms used in the signs, prevent consumers, to a greater or lesser extent, from making an immediate conceptual comparison.

The judges noted that both marks have the same meaning, namely ‘may tea’. The relevant Latvian public has a basic understanding of English and Russian and both marks consist of words forming part of these languages’ basic vocabulary.

Therefore, the signs would be understood by the same consumers, who would immediately associate the marks conceptually. They do not need to make a twofold intellectual effort or go through a complex thought process.

Schweppes relied on earlier decisions in which the General Court denied a conceptual similarity of trade marks in different languages. However, the court distinguished the cases:

The judgment concerning the signs ‘Red Riding Hood’ and the German equivalent ‘Rotkäppchen’ (case T-128/15), where the General Court denied a conceptual similarity of the signs, was not applicable because the words of those marks did not form part of the basic English and German vocabulary.

The decision denying a similarity between ‘The English Cut’ and ‘El Corte Inglés’ (Spanish for ‘The English Cut’; case T-515/12) was not deemed applicable because the grammatical structure of those signs was different. In the present case, the terms are in the same order.

The General Court applied similar considerations to case T‑471/09 where it found a low similarity between the trade marks ‘Bonfait’ and ‘Buonfatti’. Those signs had incorrect grammatical structures, composed of an adjective (‘buon’ and ‘bon’) and a participle (‘fatti’ and ‘fait’). In the present case, both marks are grammatically correct, with the consequence that the relevant public does not need to conduct an in-depth linguistic analysis, which would prevent an immediate conceptual comparison.

2. Likelihood of confusion

As to the likelihood of confusion, the judges recalled that the impact of common elements with a weak distinctive character on the likelihood of confusion is low. Conceptually, the common element ‘tea’ was deemed descriptive. Without mentioning the common element ‘may’, the Court inferred that the conceptual identity of the signs was of limited impact in the overall assessment of the likelihood of confusion because of said descriptiveness.

Further, both signs cover everyday consumer products, which are usually sold in self-service stores where consumers choose the product themselves and must rely primarily on the image of the mark. Therefore, the visual aspect carries more weight. However, the signs are visually very different.

The Court concluded that the BoA had erred in accepting a likelihood of confusion. Although the goods target the general public with an at most average level of attention, the normal distinctive character of the earlier mark and the significant visual and phonetic differences of the signs did not allow the finding of a likelihood of confusion despite the conceptual identity.

3. Claim for alteration

Schweppes asked the Court to render the decision which the BoA should have adopted. The General Court dismissed this claim for alteration. The BoA did not examine the other earlier trade marks relied on by May. Hence, the Court could not decide on the likelihood of confusion of those marks.

Comment

The General Court’s decision is questionable. The judges played down the conceptual identity in the assessment of the likelihood of confusion by arguing that the common element ‘tea’ is descriptive. However, it accepted the average distinctiveness of the common element ‘may’. If the conceptual identity of an averagely distinctive trade mark is not sufficient to find a likelihood of confusion, a conceptual identity will hardly ever be sufficient with respect to Russian, Chinese, Korean or other languages that do not share the Latin alphabet and the signs are, therefore, visually and phonetically different.

The fact that consumers perceive the trade marks primarily visually can also not be decisive because there is no way for the average consumer to perceive the meaning of a word, and therefore conceptual identity, other than visually or phonetically (cf. my comment here for figurative signs).

The judgment begs the question if the BoA may, in the new decision it has to adopt now, find a likelihood of confusion relying on a different public. There are other EU Member States in which a significant part of the public speaks basic English and Russian. While the General Court mentioned that it did not render the decision which the BoA would have to take because the latter did not assess the opposition on the basis of May’s other earlier rights, the General Court’s decision was clearly limited to the perception of the Latvian public. Hence, the judgment does not seem to prevent the BoA from arriving at the same conclusion it did by relying on, e.g. the Estonian, Lithuanian or Bulgarian public.