Similarity between trade marks on a conceptual level alone does not suffice to create a risk of confusion
EGC – 12 DECEMBER 2014 – CANAL + GROUP / OHIM – ACTU + / NEWS +
The Canal + Group, owner of the earlier French trade mark ACTU +, registered in Classes 35, 38 and 41, filed opposition against the Community trade mark application for NEWS + covering services in Classes 35, 38 and 41.
This opposition was dismissed in its entirety. The Canal + Group lodged an initial appeal with the OHIM which was also dismissed and subsequently lodged a second appeal with the General Court of the European Union (EGC).
The Board of Appeal had held that there was no risk of confusion between the conflicting trade marks given the visual and phonetic differences between the signs at issue and despite the conceptual similarities on the grounds that the signs were conceptually similar for only a section of the relevant public.
The Court held that:
- The relevant public is made up of average consumers who are reasonably well informed and reasonably observant and circumspect as well as business professionals, who are more observant, located in France.
- The signs are visibly different and, despite being of the same length, the letters are very different. Moreover, the common element “+” is not enough to create a resemblance given its limited distinctive character.
- The signs bear a slight phonetic resemblance to each other in that only the final part of each sign is identical. The Court specified that, contrary to what had been argued by the OHIM, the “+” element will be pronounced according to French pronunciation, in particular by those members of the public who are not fluent in English.
- The terms ACTU and NEWS are synonyms and, in this respect, the signs present significant similarities on a conceptual level.
The Court pointed out “that a linguistic difference between the signs is not automatically enough to exclude the existence of a conceptual similarity from the perspective of the relevant consumers” and that in this case “due to the common nature of the two terms constituting the signs at issue, it should be held that the prior translation of the term “news” shall not prevent the French consumer from associating the meaning of those terms.”
With respect to this last point, the Court found, in particular, that the term NEWS is used as an Anglicism in French and that consequently even those members of the relevant public who have no knowledge of English will associate this element with news or current affairs.
Nonetheless and according to established case law, the Court pointed out that conceptual similarity alone between trade marks is not enough to create a risk of confusion in circumstances where the earlier trade mark is not particularly reputed and consists of an image made up of few imaginary elements.
As a result, the appeal lodged by the Canal + Group was dismissed.
Contact : Marion Laperriere