Danone gets the B’lues
Again, the audience for a mark was crucial in a similarity dispute, writes Owain Willis. T-803/14, Compagnie Gervais Danone v EUIPO and Mahou, SA (B’LUE), CJEU, General Court, 28 April 2016.
T-803/14, Compagnie Gervais Danone v EUIPO and Mahou, SA (B’LUE), CJEU, General Court, 28 April 2016
In this case, the General Court had to consider whether the Board of Appeal made a mistake in its finding that the figurative mark B’LUE, filed by Danone, was confusingly similar to the word mark BLU DE SAN MIGUEL in the name of Mahou, SA. Danone sought to register the mark in respect of “isotonic beverages [not for medical purposes]; high energy drinks” in class 32, whereas Mahou, SA had coverage for, among other things, “mineral and aerated waters and other non-alcoholic drinks”, also in class 32.
The goods covered by the respective marks were deemed to be identical. Turning to a comparison of the marks themselves, the Court took the view that they were of low visual but average phonetic and conceptual similarity.
Visual power
Danone asserted that the visual aspects of the marks ought to have greater importance, because their goods were likely to be sold primarily in self-service shops to a narrow customer base of athletes. The Court stated that, while this might have been the case, it did not preclude the sale of the goods in conditions that differ from those of self-service selling, and so it was not appropriate to attribute a greater weight to the visual aspect or, conversely, to the phonetic aspect in the global assessment of the likelihood of confusion. Accordingly, it was held that, in the particular circumstances, the low visual similarity did not necessarily outweigh other similarities between the marks.
Danone’s argument that the presence of “de San Miguel” in the earlier mark resulted in great differences between the signs was also rejected. It was held that the colour blue evokes purity, coolness, serenity, or the liquid element. Therefore, the relevant public, when considering the goods, would be more aware of the conceptual identity between the shared elements of the marks than their differences.
The Court went further, suggesting that the conceptual similarities were enhanced and would play a more significant role for the relevant public: Spanish speakers capable of attributing meaning to the word “de”, and by extension to “de San Miguel”. The court reasoned that the Spanish-speaking public would regard the term “de San Miguel” as relatively banal and generic, in that it serves to designate the geographical and commercial origin of the goods, thereby resulting in “de San Miguel” playing a subsidiary role to the conceptual content of the element “blu”.
Following on from the assessment that “blu” was the dominant element that both marks shared, the Court dismissed Danone’s appeal.
No assumptions
There is nothing inherently surprising in this decision in the context of EU trade mark oppositions. However, it serves to remind practitioners that, as far as the EU is concerned, assumptions cannot be made that additional elements within a mark will be sufficient to distinguish it from others, particularly if portions of the relevant public can attribute a particular meaning to those elements.
Owain Willis is a Trainee Trade Mark Attorney at Wildbore & Gibbons LLP