BoA isn’t backed up

20th Jul 2020

Vishal Dattani looks closely at an eye-opening decision. T-688/18, Exploitatiemaatschappij de Berghaaf BV v EUIPO, General Court, 5th March 2020

eye

On 5th March 2020, overturning an earlier decision from the Board of Appeal, the General Court (GC) found no likelihood of confusion on the part of the relevant public between the marks BACKEYE and CORNEREYE for identical goods.

Earlier actions

It was back on 3rd March 2016 that Exploitatiemaatschappij de Berghaaf BV (the Applicant) filed an application to register EU trade mark CORNEREYE in class 9 in relation to: “Cameras; monitors; apparatus for the recording and reproduction of images; data-processing apparatus”. The mark was opposed by Brigade Electronics Group plc (BEG) under Article 8(1)(b) of Regulation 2017/1001 (likelihood of confusion), relying on its EU trade mark BACKEYE in class 9 for: “Closed circuit television apparatus comprising television cameras and television monitors, all for mounting on vehicles or mobile apparatus, and for use in assisting drivers in manoeuvring, parts and fittings for the aforementioned goods; all goods in class 9”.

The Opposition Division upheld the initial opposition and therefore refused registration of the mark. The Applicant’s subsequent appeal was dismissed by the Board of Appeal (BoA) in the contested decision of 24th July 2018, when it had concurred with the EUIPO’s decision.

The Applicant then filed an action before the GC, relying on two pleas in law:

  1. Infringement of Article 95(1) EUTMR; and
  2. Infringement of Article 8(1)(b) EUTMR.

The GC rejected the first plea since its purpose was to establish infringement of the principle in Article 95(1) EUTMR. The Applicant’s arguments, in seeking solely to establish that the BoA did not correctly assess evidence of use of the earlier mark in relation to its enhanced reputation, were ineffective in this context.

Comparison of the signs

In comparing the signs, the GC found that the relevant public would “perceive the signs at issue as a juxtaposition in one word of two inherently weak elements, each of which is descriptive, or at least evocative, of the essential characteristics of the goods concerned”. It held that the marks coincide visually and aurally in relation to “eye” but differ in relation to “back” and “corner”, noting that the first part of a mark generally has a greater visual impact. The additional syllable of the opposed mark would also result in more stress being placed on the beginning of the sign in terms of pronunciation.

As to the conceptual comparison, the GC found that, while “back” and “corner” can both refer to the position of a camera on a vehicle or to the concept of the field of vision, they do not convey the same concept. This was contrary to the BoA’s view that these elements had conceptual similarity to an average degree, both indicating distance and being semantically connected. The GC agreed with the Applicant, who maintained that the term “back” differed conceptually because it would be understood by consumers as referring to something situated behind or in the rear, while “corner” refers to a blind corner. As such, the BoA should have found that these elements are conceptually dissimilar.

In addition, the BoA erred in the contested decision by taking account of the words “back” and “corner” as they relate to distance for the purposes of a visual and phonetic comparison, a point that the EUIPO itself acknowledged at the hearing.

Assessment error

In relation to the component “eye”, the GC agreed with the Applicant, finding that it will be perceived by the relevant public as referring directly to the function of the goods at issue, namely to facilitate vision while driving by way of a camera. It is therefore descriptive of an essential characteristic of the goods. The mere presence of this descriptive element does not automatically imply that the signs are visually, aurally and conceptually similar. 

There was therefore no dominant element to the signs and each element was held to be descriptive of the goods in question, or at least one of their characteristics. When comparing each element of the signs separately and as a whole, it was not possible to conclude that there was a similarity between the signs.

In conclusion, the BoA was wrong in its overall assessment in finding that there would be a likelihood of confusion among the relevant public. The GC found no similarity between the marks due to the element in common – “eye” – being descriptive, its position at the end of the marks and the resulting lack of visual and phonetic similarity between the signs. These visual differences cannot be offset by any degree of conceptual similarity, since the terms “back” and “corner” have different meanings.

This finding was not affected by BEG’s submissions that its mark had acquired enhanced distinctiveness through use.

A Brexit twist

The decision reminds us that particular care must be taken when comparing inherently descriptive marks. If the signs coincide only in non-dominant, descriptive and non-distinctive elements, and are dissimilar in other aspects, even though the goods are identical, other factors such as the weak distinctive character of the earlier mark, the low degree of visual and aural similarity, and conceptual dissimilarities between the marks may be sufficient to exclude a likelihood of confusion.

It was interesting to note that the Applicant’s request for a stay of proceedings until the EU Treaty and FEU Treaty cease to apply to the UK was not granted. This further adds to the uncertainty of Brexit. Watch this space.

Key points

  • The presence of shared descriptive elements does not automatically mean two signs will be visually, aurally or conceptually similar
  • Even if an earlier mark is considered to have acquired enhanced distinctiveness through use, if the signs are different overall because there is no degree of similarity, there cannot be a likelihood of confusion on the part of the relevant public

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