General Court overturns EUIPO’s ‘incorrect analysis’ of ‘illusions’ TM
An EU court has quashed a ruling by an EU Intellectual Property Office (EUIPO)’s board of appeal, finding that it had erred in its analysis of a trademark’s potential to cause consumer confusion.
The second chamber of the EU General Court handed down the decision yesterday, May 12.
In September 2017, Croatia-based museum Metamorfoza d.o.o filed an application for registration of an EU trademark with the EUIPO for ‘Museum of Illusions’ covering services and products, including exhibitions, educational materials, reproductions and entertainment.
In November 2017, Lithuania-based museum and events company Tiesios kreivės, filed a notice of opposition, claiming the disputed mark bore similarity to its own earlier mark and would cause consumer confusion.
In January 2019, the EUIPO’s opposition division upheld this argument and refused to register the mark applied for, on the grounds that there was a likelihood of confusion.
After Metamorfoza appealed, EUIPO’s second board of appeal confirmed the opposition division’s assessment that the services at issue were identical or similar.
While the board found the EU was the relevant territory in this case, it would focus on the public in Greece “for reasons of procedural economy”.
An incorrect analysis
The board found that the signs were visually similar to an above-average degree, whereas they were phonetically and conceptually identical. Consequently, it found that there was a likelihood of confusion on the part of the relevant public.
On appeal, Metamorfoza complained that the board had carried out an incorrect analysis of the most distinctive and dominant elements of the signs and of their comparison, in particular from the visual and conceptual standpoints.
This week, the court found that the board was right in finding that the signs at issue were conceptually and visually identical, but held that it had erred in its analysis of the most distinctive elements in the signs.
This was because the board had carried out an “analysis of the distinctive character of each of the words contained in the signs at issue and not of the overall expression which those words formed,” the court said.
“Consequently, even for the part of the relevant Greek public which does not understand the word ‘illusions’, the expression ‘Museum of Illusions’ will refer to the description of a museum of a particular type or relating to a particular theme and, for that reason, it must be held that that expression will be perceived as being descriptive of the services at issue, namely museum services,” the court stated.
It further held that the expression ‘Museum of Illusions’ contained in the signs must be held to have a weak inherent distinctive character.
The court contended that the board had erred in finding that the word elements of the signs at issue were likely to make a stronger impression on the relevant public than their respective figurative elements. “Such an assessment is, in the light of the weak distinctive character of the expression ‘Museum of Illusions’ in the signs at issue, incorrect,” it stated.
The court also held that, although the board’s finding that the mark had normal distinctiveness was not disputed by the parties, its merits must be reviewed, because that finding was based on an incorrect premise.
The court found that the board should have concluded that the earlier mark had a low degree of inherent distinctiveness.
‘No likelihood of confusion’
The court agreed with the board that the signs at issue were phonetically and conceptually identical as well as visually similar to a degree ranging from low to average.
But it held that the visual similarity between the signs and their phonetic and conceptual identity arose solely out of the presence, in those signs, of the expression ‘Museum of Illusions’ and this would only “slightly attract the attention” of the relevant public.
“Likewise, the capacity of that expression to identify the services at issue as coming from particular undertakings and thus to distinguish those services from those of other undertakings must also be held to be slight,” the court found.
It concluded that the impact of those elements of similarity on the global assessment of the likelihood of confusion must be held to be low and that because the earlier mark has a low degree of inherent distinctiveness, it “enjoys less extensive protection and that therefore the likelihood of confusion is, in such a case, lower”.
The court stated: “Consequently, it must be held, as a result of the global assessment of the likelihood of confusion, that the board should, in the contested decision, have concluded that there was no such likelihood of confusion in the present case.”
The court annulled the decision of EUIPO’s second board of appeal and ordered each party to bear its own costs.
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