Word element of the earlier mark dominant but irrelevant

It held in vain that there was a likelihood of confusion with the earlier figurative mark Gastivo: both marks show cutlery in a green circle. The CFI denied the likelihood of confusion, although identical services in the restaurant and catering area are claimed. The word element of the earlier mark was decisive.

The word element in the earlier figurative mark Gastivo was the decisive point in the trade dispute about the two similar Union figurative marks. The proprietor of the earlier figurative mark Gastivo, the applicant gastivo portal GmbH (Germany), argued that the figurative element of the earlier mark was dominant and that there was great similarity between the figurative elements of the two marks.

The European Court (European Court of First Instance, CFI) contradicted this view. With regard to the earlier mark, it should be noted that the word element is significantly larger than the figurative element, so that it is dominant, the court ruled. Although the figurative element of the mark is at the beginning, the word element of the earlier mark is not negligible in the overall impression created by that mark. Therefore, the visual, phonetic and conceptual comparison of the marks at issue cannot be limited to taking account of the figurative element of the earlier mark.

Word element of the earlier mark dominant but irrelevant

The Court once again pointed out that the word element in figurative marks is particularly relevant to consumers, since consumers want to communicate with the goods.

In this context, please also read: “Similarity of Union figurative marks – word element decisive“.

However, where, as in the present case, two figurative marks are compared, one of which has a word element and the other of which has none, a phonetic comparison is not relevant in the assessment of the similarity of those marks. Therefore, since the mark applied for does not contain any word element, it is not necessary to carry out a separate phonetic comparison with the earlier mark.

No visual similarity

As regards the visual comparison, the Board of Appeal rightly ruled out a likelihood of confusion, the Court added, pointing out important differences between the marks at issue.

In the mark applied for

the fork depicted is positioned vertically, unlike the fork depicted in the figurative element of the earlier mark;
extends beyond the green circle surrounding it;
and have rectangular prongs on

Moreover, one mark is represented with a knife and the other without.

Weak conceptual similarity

In the conceptual comparison of the marks at issue, the Court acknowledged that the marks at issue have a slight conceptual similarity. Both marks represent cutlery.
However, the word element of the earlier mark is also irrelevant in the conceptual comparison. The word element of the earlier mark could not be conceptually comparable to the mark applied for because the later mark does not have such a word element, the CFI held.

Therefore, the conceptual similarity was also only weakly pronounced, the European Court explained. The CFI pointed out that there is not always a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 if the marks are considered to be slightly similar.

Interaction in the global assessment of likelihood of confusion

In the overall assessment of the likelihood of confusion, a low degree of similarity between the goods or services claimed may be offset by a high degree of similarity between the marks, and vice versa, the CFI stated.

The applicant therefore argued in vain that there was a high degree of similarity between the marks at issue and between the services concerned.

Although the services in question could even be considered identical, the similarity between the marks was too weak to give rise to a likelihood of confusion, the CFI held. The mere association as such is not sufficient to give rise to a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 – unless the earlier mark is a very well-known brand name. However, that is not the case here.

Therefore, the Board of Appeal was right to find that there was no likelihood of confusion, the CFI held, notwithstanding the fact that the services concerned are identical.

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