Defeat for Continental: Competitor Michelin stops trademark application

Decision in the dispute between the two tire giants Michelin and Continental. The Court of Justice of the EU (CJEU) confirms the judgment of the General Court and stops the application of Continental’s trademark “XKING”. The trademark has a likelihood of confusion with Michelin’s older trademark “X”.

Continental’s “XKING” trademark: first accepted, then stopped by Michelin

In February 2012, Continental filed an application at the EUIPO fo registering its trademark “XKING” in Class 12 of the Nice Agreement for ‘Tyres and Inner tubes for tyres”. The Registration of the trademark was granted. Shortly thereafter the french tire producer Michelin filed a notice of opposition claiming there was a likelihood of confusion with its own trademark “X”. Michelin’s trademark, registered in France in 1990, is also registered for class 12 of the agreement.

Michelin’s opposition was first agreed by the opposition divison, but was then stopped by the Fourt Board of Appeal of the EUIPO ruling that there is no strong likelihood of confusion. But then in 2015, the General Court had a different view on the things, finding that there is a visual and aural similarity and a normal level of inherent distinctiveness between the two trademarks.

CJEU confirms decision of General Court, but has some criticism

Now the CJEU published a decision on the case uphelding the General Court’s conclusion. But the CJEU agreed not on all conclusions of the Gerenal Court. And ahead, the appeal was limited to points of law and could not be used to re-evaluate the facts.

The CJEU has a few criticisms on the judgement of the General Court. The CJEU, in particular, rejects the decision of the General Court that the previous French mark has a normal degree of inherent distinctiveness. The assessment would be based on distorted evidence.

For example, the CJEU examined the evidence from Continental, in which Michelin’s “X” trademark was used in isolation or in combination with other letters in the Michelin brochures to describe the tread pattern of some tires. The CJEU noted that Continental was right and that the court had misread and misinterpreted the brochures. The General Court was wrong with the decision that the X trademark had normal distinctiveness. The CJEU did not then say in particular which distinctive power the X-brand has, but the conclusion is that it is weak.

General Court: Decision cannot be overturned

However, the decision could not be overturned, since “the General Court could find that there was a likelihood of confusion between the marks at issue on the basis of other legal grounds”.

The Court adds that the General Court can also hold that there is a likelihood of confusion given in a case where an earlier trade mark of weak distinctive character is situated, based on “similarity between the signs and between the goods or services covered”.

In that case, the fact that the earlier French trademark had a normal distinctive character was not relevant.

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