Language barrier looms large
The relevant public has a great importance, warns Sarah Husslein. B 2 801 051, Father and Sons v Mahtab Kaushal, EUIPO, 22nd March 2019.
B 2 801 051, Father and Sons v Mahtab Kaushal, EUIPO, 22nd March 2019
Key points
- Finding a likelihood of confusion for a non-negligible part of the French public is sufficient for rejecting an EUTM application
- In considering visual and aural similarity within the ambit of Article 8(1)(b), the coincidence of two “invented words” has a great deal of influence on the mark’s overall impression
In this decision, the Opposition Division of the EUIPO (OD) partly upheld the opposition and found that the application for LIKE FATHER LIKE SON should be refused under Article 8(1)(b) of the European Union Trade Mark Regulation (EUTMR).
Mahtab Kaushal (the Applicant) applied to register the word mark LIKE FATHER LIKE SON for a range of goods in classes 14, 18 and 25 (the Application). Father and Sons (the Opponent) filed an opposition against all the goods covered by this application, alleging a likelihood of confusion notably with the earlier French trade mark registration No 43317290 for FATHER and SONS, registered in relation to goods in classes 14, 18 and 25 (the Earlier Mark). The Opponent also invoked Article 8(4) EUTMR, relying on its French company name FATHER AND SONS and the domain name fatherandson.fr, as well as Article 8(5) EUTMR.
Comparison
Unsurprisingly, the OD considered the goods covered by the application to be either identical, similar or dissimilar to those covered by the Earlier Mark.
Turning to the comparison of the marks, the Office confirmed that the relevant territory was France. Although it considered that part of the French public might know the words FATHER and SON(S), it took the view that the majority of the public is unlikely to attribute any meaning to them, especially citing two reasons:
- The French translations of these words are completely different (père and fils); and
- No party submitted evidence to show that these words will be generally understood by French consumers.
The OD also reiterated that the French public is not recognised as having some general understanding of English.
Therefore, it concluded that a significant part of the relevant public (ie the French consumers) will see the words FATHER and SON(S) as invented words and focused its analysis on this public when assessing the marks under comparison.
The Office held that the marks were visually and aurally similar. It noted that both signs contained two identical elements – the invented words FATHER and SON(S). This coincidence will particularly catch the attention of the consumers. The Office noted that the element AND will be regarded as secondary in the Earlier Mark and the word LIKE, which occurs twice in the Application, will be meaningless for the majority of the relevant public.
Findings
Overall, the OD found that there is a likelihood of confusion on the part of the relevant French public, and therefore the opposition succeeded under Article 8(1)(b).
The Office rejected the other grounds of opposition as the documents provided by the Opponent did not show what kind of business activity the company name FATHER AND SONS has had or the economic dimension of this activity (likewise for the domain name fatherandson.fr). Finally, the Opponent did not submit any evidence concerning the reputation of the Earlier Mark on which the opposition was based.
Here, the OD’s consideration of the French public’s knowledge of English and perception of the marks under comparison is interesting. Would the decision have been different if the relevant public were the English-speaking consumers in the European Union?
Sarah Husslein is an Associate (Registered European Lawyer) at Bristows LLP