On September 8, 2010, the General Court has confirmed previous findings of the Opposition Division and then of the Board of Appeal by holding that a likelihood of confusion existed between the marks ICEBREAKER (contested CTM) and ICEBERG (earlier opposed trademarks) for the Italian public for products of class 25.
The General Court found that the Board of Appeal was right in finding said marks to share a considerable visual similarity and said that a less than average level of phonetic similarity existed between them.
Conceptually, only part of the relevant Italian public was regarded as able to understand English. While differing to a certain extent considering that ICEBERG referred to ice and ICEBREAKER to a boat designed to break ice, a connection was still regarded as possibly existing between these words for the relevant public even if the Court decision pointed out at the same time that only ICEBERG would indeed be regarded as having a clear meaning for the public contrary to ICEBREAKER.
In the end So as to safer conclude on the conceptual level of the comparison, the Court said that so as to safely conclude the conceptual comparison was not decisive enough to rule out the overall likelihood of confusion. When making its global assessment, the General Court only considered the identical nature of the goods at issue, the distinctive character combined with the distinctiveness of the earlier mark on the Italian marked to conclude that there was a likelihood of confusion.
This decision leaves the readers perplex. Considering the visual similarity as being ‘considerable’ may be regarded as excessive. But most of all the approach, importance and exact role played in this matter by the intellectual level of comparison looks indeed weird, unclear and even (if we dare to say it) not understandable. What’s the point of going into such a deep analysis of the intellectual aspects to the extent that the room left to the visual and phonetic analysis in the decision is residual if they are not in the end regarded as not decisive for the case?
There is also quite ambivalence between this large analysis made and the final overall assessment which actually took refuge behind the identity of the products and particular distinctiveness to conclude to a likelihood of confusion.
Last but not least, this Community approach must not hide a possible different analysis under a strict national and internal level especially as to the (doubtful) level of English knowledge granted to the Italian consumers which is unlikely to be the same than German citizens for instance.