DECISION OF THE COURT OF JUSTICE OF THE EUROPEAN UNION – 5TH CHAMBER - 3 JUNE 2015 – T604/13 "501/101"
The US company Levi Strauss & Co. owns the Community word mark, 501 (no. 000026708 of 7 September 1998), notably registered in Class 25.
It filed an opposition against the Community trademark application for 101, notably referring to Class 25, in the name of the German company L&O Hunting Group.
On 18 June 2012, the Opposition Division rejected the opposition, holding that there were sufficient differences between the signs to prevent any risk of confusion, even taking into account the highly distinctive character and reputation of the earlier trademark.
On 6 September 2013, the OHIM's Board of Appeal rejected the appeal lodged by Levi Strauss & Co, who then filed the present appeal.
The findings of the OHIM with regard to the relevant public (the average consumer across all Member States of the European Union, reasonably informed, observant and circumspect) and the comparison of the products (identity) are not contested.
The dispute relates to the comparative assessment of the signs.
The OHIM rightfully held that, "An assessment of the overall similarity of the signs must be based on the main marketing method used for the products concerned as the visual, phonetic and conceptual aspects do not always have the same importance."
In the clothing sector, the visual aspect of products predominates and so visual differences could cancel out broader phonetic similarity in this sector. Furthermore, the consumer perceives the trademark as an indivisible whole, without spelling it or breaking it down.
In this case, the signs at issue are composed of three numbers, with those in second and third positions being identical, i.e. "0" and "1".
The signs are admittedly short, but the dissimilarity of a single element of the composition cannot produce a different overall impression for each of the signs unless a special circumstance is identified. In this case, the difference between a "binary symmetrical" structure and an "asymmetrical" structure does not constitute a special circumstance. The signs therefore present a certain degree of visual similarity.
From a phonetic perspective, the importance of this similarity is lessened to the extent that the products referred to are marketed so that consumers usually perceive the brand visually. In this case, when the compared signs are pronounced, the common parts of the signs appear to be the longest and therefore the degree of phonetic similarity of these signs is low.
The fact that the signs cannot be compared from a conceptual perspective is not disputed since numbers, as such, do not communicate a concept.
It is in light of the foregoing that the Court overturned the decision of the OHIM's Board of Appeal and held that a certain degree of similarity existed between the 501 and 101 signs in the clothing sector.
This decision reminds us of the importance of the in concreto assessment of a risk of confusion in view of the distribution method for the products or services concerned.
Contact : Marion LAPERRIERE