CJEU rejects call for global assessment of CTM application

The Court of Justice of the European Union (CJEU) has rejected an argument raised by Debonair Trading that a lower court was wrong to not conduct a global assessment of a potentially infringing trademark application.

Portugal-based Debonair had claimed that rival Ibercosmetica’s 2009 Community trademark (CTM) application for the term ‘Sô:unic’ was too similar to its family of registered trademarks for the term ‘So...’.

In its opposition to the mark, Debonair cited 24 registered marks it owns, both trademarks and CTMs, that begin with the phrase ‘So...’. The CTMs included ‘So...?’ and ‘So...? Chic’, registered in 2001 and 2008 respectively.

Both Debonair’s and Ibercosmetica’s marks cover cosmetics and perfumery.

Debonair opposed Ibercosmetica’s application in 2009, but the Office for Harmonization in the Internal Market (OHIM) dismissed the opposition two years later.

The general court affirmed OHIM’s decision in April 2014.

The court said that because the marks were not similar enough, it was not necessary to complete a global assessment of Ibercosmetica’s applied-for mark.

“The graphic and semantic differences between the mark applied for and the family of marks relied on are sufficient to preclude the mark applied for from being regarded as belonging to that family, irrespective of the goods covered,” the general court concluded.

Debonair appealed against the ruling in June last year to complain that no global assessment had been carried out.

However, on Thursday, October 15, the CJEU said that Debonair’s protestations were “unfounded”.

“It must be held that the appellant’s complaint that the general court did not carry out a global assessment of the likelihood of confusion taking all the relevant factors into account is unfounded,” the CJEU said.