If an earlier mark with a reputation is fully integrated into a new mark, this is considered to be an indication of similarity and likelihood of confusion. MAN could not assert this against MANDO before the CJEU – but nevertheless won the action in part.
The Board of Appeal rejected the opposition on the ground that the degree of similarity between the marks was not sufficient to give rise to a likelihood of confusion, even if the earlier mark had a good reputation in Germany and Austria.
In conceptual terms, the marks are completely different and there is little visual or phonetic similarity between them. MAN GmbH challenged this decision before the Court of Justice of the European Union (CJEU).
Likelihood of confusion with earlier well-known trade mark
When assessing the likelihood of confusion, the overall impression must be assessed, in particular the distinctive and dominant features. The CJEU recalled that, according to case-law, even minor differences between two signs are capable of producing a different overall impression, even if those signs consist of short words. However, the reputation of an earlier mark or its particularly distinctive character must be taken into account when assessing the likelihood of confusion and not when assessing the similarity of the marks in question. And similarity is an assessment made before the likelihood of confusion is assessed.
Similarity of the marks
The CJEU also referred to the case law, which states that if the earlier mark is fully included in the mark applied for, this is usually an indication of the similarity of the marks. However, MAN could not successfully assert this in the present case.
The letters ‘d’ and ‘o’ cannot be regarded as of secondary importance for the mark applied for, since they make up almost half of it. The CJEU confirmed the contested decision of the Board of Appeal that the term “mando” was perceived as a whole and that therefore the fact that the earlier mark was fully integrated into the new mark did not justify a sufficient degree of similarity. Also, the fact that consumers normally attach more importance to the first part of the words does not apply in every case and is not relevant here due to MANDO’s brevity and compactness.
Moreover, the fact that the specialist public may be able to identify the MAN marks in the mark applied for does not mean that it confuses those registrations with the mark applied for, the CJEU held, referring to the after-sales service customary for those goods, the relevance of which to the MAN marks had itself made clear in order to be able to rely on the meaning of the phonetic similarity between the two marks. The CJEU therefore held that oral communication could take place with qualified sales staff capable of informing customers about the various marks and confirmed that the Board of Appeal had rightly ruled on similarity and likelihood of confusion in its contested decision.
MAN nevertheless wins the case in part
Nevertheless, the CJEU annulled the decision of the Board of Appeal in so far as it concluded that there was no likelihood of confusion between the figurative mark MANDO and the earlier international registration No 863 418 of the figurative mark MAN. The contested decision did not contain sufficient and specific reasons for the international registration and the services covered by it in Class 35.
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Sources:
Judgement CJEU: MAN vs. MANDO EU:T:2019:533
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