Game over for Sony

4th Jan 2022

Showing the same letters in the same sequence does not lead straight to visual similarity, warns Sarah Husslein

In this decision, the General Court (GC) confirmed the EUIPO Board of Appeal’s findings and dismissed an appeal by Sony in its entirety.

To recap the case history, it began when Mr Wong (the Applicant) filed an application on 23rd August 2017 to register GT RACING as an EU trade mark (EUTM) in respect of various goods in class 18, notably “leather and imitations of leather; backpacks and rucksacks; wallets, key cases, purses and pouches; etc” (the Application).

Sony then filed an opposition against all goods covered by the Application, pursuant to Articles 8(1)(b), 8(4) and 8(5) EUTMR, relying on 14 trade marks including figurative and word marks, registered and unregistered.

These marks featured a figurative element, the words “Gran Turismo” or the letters “GT”, and covered various goods, notably in classes 9, 16 and 28. 

The Opposition Division (OD) rejected the opposition in its entirety, and the appeal filed by Sony was subsequently dismissed by the Board of Appeal (BoA).

Sony further appealed the decision to the GC and limited the scope of the opposition to EUTM No. 820738 for a figurative mark (the Earlier Mark) registered in classes 9, 16 and 28, as well as EUTM No. 920662 for “GT” registered in class 16.

GC decision

Sony did not dispute the level of attention of the relevant public adopted by the BoA but challenged the identification of this public.

The GC dismissed Sony’s arguments and confirmed that the goods at issue were all aimed at the general public, as they were not goods intended for a specialist public or for a limited circle of persons.

It noted that these goods are not sold on a target market, but on a general public market, and that no special skills or knowledge are essential for their purchase.

Therefore, the GC confirmed the BoA’s finding that the public in relation to which the analysis of the likelihood of confusion had to be carried out consisted of the general public with, at most, an average level of attention.

When comparing the Application and the Earlier Mark, the BoA found that if the figurative element of the Earlier Mark represents the capital letters “G” and “T”, their depiction is so stylised that it was unlikely that they would be recognised as such by the relevant public.

The BoA considered that the consumer would have to make significant efforts to perceive characteristics which constitute the letters “G” and “T” in the two figurative forms contained in the Earlier Mark. Accordingly, the BoA concluded that the signs at issue were visually different and that a phonetic and conceptual comparison was not possible.

Sony disputed this assessment and argued that the BoA had erred in limiting the examination of the similarity of the signs to the uneducated consumer and ignored the use of the Earlier Mark. It argued that this error vitiated the BoA’s entire analysis.

The GC reiterated the general principle that although the marketing circumstances are a relevant factor in the application of Article 8(1)(b), they are to be taken into account during the global assessment of the likelihood of confusion and not when assessing the similarity of signs.

Only the signs’ intrinsic qualities must be taken into consideration when comparing the marks. 

The GC then confirmed the BoA’s finding. It considered that the Earlier Mark consists of bold, curved, vertical and horizontal lines and noted that the Application is for the word sign GT RACING.

The mere fact that the Earlier Mark may have been developed on the basis of the abstract concept of the capital letters “G” and “T” is not, in itself, a sufficient ground for concluding that there is a visual similarity between the signs at issue.

The very specific graphic design of the Earlier Mark therefore had the effect of counteracting to a large extent the alleged point of similarity relating to the fact that it may be understood as a reference to the capital letters “G” and “T” by part of the public.

Therefore, the GC considered that the consumer would have to engage in a highly imaginative cognitive process in order to “decipher” that figurative sign and to perceive it as representing the capital letters “G” and “T”.

It concluded that the trade marks under comparison were therefore visually different.

The GC went on to confirm that the signs were not phonetically similar and that since the marks did not convey any message, it was not possible to conclude there was any semantic concept in common between them.

Turning to the comparison of the goods, the GC confirmed the BoA’s finding that the goods at issue are neither of the same nature nor the same purpose, nor intended for the same purpose or for the same use.

It also held that the fact that all of the goods in question may be used for merchandising purposes is not sufficient to establish similarity. 

The other pleas in law relied on by Sony – alleging that the BoA failed to take into consideration the other grounds of opposition set out in Article 8(1)(b) and 8(5), and erred in the application of the rules relating to an action for passing off – were also rejected as unfounded. 

Overall, the GC dismissed the action in its entirety. It reiterated some basic principles when assessing the likelihood of confusion between trade marks, as well as the different steps in the comparison process that should be followed by the Office and the parties.

This decision is also a good reminder that filing one trade mark for a word element and one trade mark for a highly stylised version of that word element may in some cases offer better protection (and also some flexibility should the rights owner change the stylisation in the future).

Key points

  • The very specific stylisation of the Earlier Mark counteracted to a large extent the allegation that it may be understood as a reference to the letters “G” and “T” by part of the public 
  • Too much stylisation makes the verbal elements of a mark hard for consumers to perceive
  • Similarity between trade marks must be assessed separately, without taking into account marketing materials. These elements cannot compensate for a lack of similarity between the signs
Read the full issue

 

Author

  • Sarah Husslein

    ‘Avocat’ admitted to the Paris Bar & Registered UK Trade Mark Attorney, Bristows LLP