Introduction:

In the realm of Trade mark law, the smallest of differences in marks ends up playing a pivotal role in establishing the protectability of a mark. As a mark is a valuable asset to any business/ trade, the trademark law places a significant emphasis on the uniqueness and the dissimilarity of marks. The trade mark registration authorities and quotes use various criteria in order to evaluate the differences between marks which include visual phonetic structural and conceptual dissimilarity. The more different the marks are in these aspects the more likely can they peacefully coexist in the marketplace without causing confusion or infringing the other’s rights.

Brief facts:

Big Hug Nutrition GmbH (the Applicant) sought to register the mark “” vide an application filed on November 25, 2020, for goods in classes 05, 25, 29, 30 and 32.

On May 07, 2021, Fox Head Inc (the Opponent), filed an opposition pursuant to Article 8(1)(b) EUTMR against the European Union trade mark application for the goods in class 25[1]. The Opposition was based on the earlier International Registration designation European Union for the mark “”, filed and registered on August 19, 2019, in classes 09 and 25.

The Opposition Division worked on the assumption that all of the goods were identical and were directed at the public at large and the professional public. The degree of attention was considered to be average and the relevant territory was that of the European Union. The marks were taken to be purely figurative, depicting geometrical figures. The mark “”, was said to have a parallelogram from which a small triangle extended to the left side. Beneath it, there was a bigger parallelogram from which a triangular shape extended downwards on the right side. Furthermore, the mark was said to trigger an association of the number ‘7’ in the minds of the relevant public. Whereas, the Applicant’s mark “” was said to comprise a grey parallelogram, with an irregular grey pentagon shape oriented to the left beneath it. Additionally, the mark was said to be a stylized letter ‘F’ as was stated by the Applicant. Since no phonetic difference could apply and basis all these interpretations, vide the decision of July 19, 2022, the Opposition Division rejected the opposition in its entirety on the grounds that there was no likelihood of confusion between the two marks and ordered the Opponent to bear the costs.

On 15 September 2022, the Opponent filed an appeal against the contested decision requesting for the decision to be set aside. The Opponent further stated that the goods of the Applicant and that of the Opponent are identical/similar and stated that the slight visual differences between the signs, such as the difference in the length of the space between the upper and lower parallelograms, the difference in the degree of inclination or the colour are not eye-catching and cannot dispel the high degree of visual similarity arising from their overall impression. Further, the Opponent stated that the Opponent’s mark did not claim any specific colour and that the overall shape of the Applicant’s mark would be suggestive of a lightning bolt.

Held:

The Board of Appeal again reiterated that there exists no likelihood of confusion within the meaning of Article 8(1)(b) EUTMR. The Board also followed the route wherein there was the assumption that all of the goods were identical. Contrary to the stance taken before by the Opposition Division, the Applicant’s mark “” would not be perceived as a stylized letter ‘F’. To recognise the letter ‘F’ in the Applicant’s mark would require several mental steps which the relevant public is unlikely to perform. Further, owing to the same reasons, the Applicant’s mark would not be perceived as a stylised depiction of a lightning bolt, as contended by the Opponent, for it does not contain the typical zigzag shape of such depiction. Instead, the Applicant’s mark would be perceived as an abstract combination of basic geometrical shapes. Similarly, the Opponent’s mark would not be perceived as the number ‘7’.  However, the Board went on to state that besides all these reasons, there were significant differences between the competing marks which would not go unnoticed by the relevant public. Further, with regards to the Opponent’s assertions that they did not claim a colour for their mark, the Board stated that no claim does not equate to each and every colour combination. Due to the beak-like triangle at the end of the parallelogram in the Applicant’s mark and further due to the differences in the sizes of the parallelograms of the competing marks, the overall visual similarity was stated to be low. Considering all these factors, the similarity of the competing marks was held to be low and the decision of the Opposition Division was held to be correct.

Analysis:

The decisions rendered by the Opposition Division and the Board of Appeal serve as compelling examples of a meticulous and legally sound application of trade mark law principles. In these decisions, a comprehensive assessment was made, taking into account the visual and conceptual components of the competing marks. This assessment underscored the fundamental requirement of immediate and straightforward perception by the relevant public, thus affirming the critical importance of considering the cumulative impact of various factors, which lies at the core of trade mark law. The legal analyses conducted in these decisions reflect a judicious approach in aligning with established trademark law principles. By highlighting the need for distinctiveness and avoiding consumer confusion, the decisions reaffirm the overarching purpose of trademark law in protecting the integrity and uniqueness of marks in the marketplace. These cases provide valuable insights into the meticulous scrutiny and deliberation inherent in trade mark law proceedings, resulting in decisions that ultimately promote the integrity of brands and safeguard consumer expectations.