Especially where the relevant public does not speak any of the languages using these letter. The trademarks at issue depicted the letter "Ø" from the Danish alphabet and the letter "ф" from the Greek and Bulgarian alphabets.
In 2017, the US company Cole Haan LLC submitted an application for registration with the European Union Intellectual Property Office ("EUIPO") under Regulation (EU) 2017/2001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark ("EUTM Regulation"), seeking EU trademark protection for goods in Classes 18 and 25 of the Nice Classification (e.g. travelling bags and clothing) marketed under the figurative sign "Ø", as shown below:
In 2018, the Danish company Samsøe & Samsøe Holding A/S submitted an opposition against the application, as a holder of the international registration designating the EU of an earlier trademark also registered for goods, inter alia, in Classes 18 and 25 of the Nice Classification, marketed under the figurative mark "ф", as shown below:
The opposition was grounded on Article 8(1)(b) of the EUTM Regulation. The Danish company argued that the opposed trademark must not be registered, as due to its high degree of similarity with the earlier trademark, there is a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected.
Both the Opposition Division and the Board of Appeal of the EUIPO refused the registration of the opposed trademark, and the applicant contested the decision of the Board of Appeal. In the contested decision, the Board of Appeal concluded that there is a likelihood of confusion on the part of the relevant public, which was defined as the French-speaking public with no command of Danish, Bulgarian or Greek and displaying an average level of attention.
In its appeal, the applicant did not dispute the definition of the relevant public for which the Board of Appeal assessed a likelihood of confusion. Nevertheless, the applicant argued that there is no likelihood of confusion, alleging, inter alia, that the Board of Appeal erred in its finding that the signs at issue are visually similar to a high degree, as well as in its findings that a phonetical and conceptual comparison of the signs is not possible.
Findings of the General Court
The General Court also found that the relevant public is likely to confuse the figurative signs at issue, hence dismissing the applicant's appeal.
In its reasoning, the court took into account the already established case law pursuant to which for an EU trademark to be refused registration, it is sufficient that likelihood of confusion exists in part of the European Union, i.e. in this case, amongst the defined relevant public, namely the French-speaking public. The court also noted that the parties each understood that the applicant's sign depicts the letter "Ø" from the Danish alphabet, whereas the earlier trademark's sign depicts the Greek letter "ϕ" or the letter "ф" from the Cyrillic alphabet used in Bulgarian.
As part of its argumentation, the applicant explained that the relevant French-speaking public is used to distinguishing visually similar letters, such as, "b", "p", "d" and "q", "i", "j" and "l", capital letters "O" and "Q" and others. It also pointed out that German-speaking consumers also easily distinguish the letter "ß" from the letter "B" and Greek consumers the letter "θ" from the letter "ϕ". The court noted that these assertions referred only to letters in the languages spoken by the relevant consumers. However, in the case under consideration, the letters "Ø", "ф" or "ϕ" are not used in the language spoken by the relevant French public and, therefore, it cannot be presumed that they will be able to recognise that the signs are actually letters from foreign alphabets and to distinguish between them. Thus, the court concluded that the signs at issue are visually similar to a high degree.
Next, the court also confirmed the findings of the EUIPO that a phonetic and a conceptual comparison between the signs at issue is not possible. The court took into account, inter alia, the previously established case law pursuant to which it cannot be assumed that the relevant public would have knowledge of a foreign language. Thus, the court noted that there is no certainty that a French-speaking consumer would be able to correctly pronounce (if at all) a letter used in a foreign language such as Danish, Greek or Bulgarian, and that it cannot be presumed that such a consumer would be able to identify the signs as letters from foreign alphabets and, therefore, to draw a conceptual distinction between them.
The General Court decision develops the case law on the likelihood of confusion and essentially provides a fair warning that using a sign depicting a letter as a trademark might be risky, particularly if the majority of the relevant public does not speak the language in question.
It is interesting to speculate on whether the court's conclusion would have been different if the defined relevant public spoke at least one of the three languages. For example, would it have been considered sufficient to establish no likelihood of confusion if the relevant public recognises one of the signs as a letter and, therefore, is able to distinguish that the other sign does not represent this letter?
For Bulgarian-speaking consumers, the earlier trademark is instantly recognisable as the letter "ф" from the Cyrillic alphabet and therefore should not be confused with the opposed trademark. Thus, although a Bulgarian-speaking consumer may not be presumed to recognise the opposed trademark as a Danish letter, he or she would arguably be able to distinguish that the figurative sign "Ø" does not represent the letter "ф" from the Cyrillic alphabet.
On the other hand, in our practice at Schoenherr Bulgaria we already have had the chance to successfully oppose an earlier three-letter international registration to a three-letter Bulgarian application on the grounds (among others) that there is a graphical similarity between the first letters of the respective signs – O and D. In that case, the most relevant aspect was not the knowledge or absence of knowledge of the respective languages and alphabets, but the graphical appearance/writing of the compared letters. The latter concept has already been confirmed by several decisions of the Bulgarian Supreme Administrative Court, although initially rejected by the Patent Office of the Republic of Bulgaria and some first instance courts.
Both the above discussed decision of the General Court and our Bulgarian experience show that the comparison of (single) lettered trademarks can be a complex and multi-layered exercise requiring good knowledge and understanding of current court practice and a creative approach to elaborating all the possible aspects and perspectives of the comparison process.