“This article first appeared on WTR Daily, part of World Trademark Review, in May 2021. For further information, please go to www.worldtrademarkreview.com.”
- The General Court has annulled a decision of the Board of Appeal nding that there was a likelihood of confusion between ÂME and AMEN.
- The court found that ‘amen’ possesses a clear and determined meaning which the relevant public would immediately grasp, even in a non-religious context.
- Therefore, the term ‘amen’ could not be considered as abstract and would not escape the attention of the relevant consumer.
On 5 May 2021 the General Court issued its decision in Grangé v European Union Intellectual Property Office (EUIPO) (Case T-442/20), which involved the marks ÂME and AMEN.
Background
On 3May 2018 the word mark ÂME was led in Classes 18 and 25. Nema Srl opposed the application on the basis of its prior gurative trademark AMEN (depicted below) in Classes 18 and 25, on the ground that there was a risk of confusion (Article 8(1)(b) of Regulation 2017/1001):
The Opposition Division of the EUIPO rejected the opposition.
Following an appeal by the opponent, the Fourth Board of Appeal annulled the decision and rejected the trademark application, finding a likelihood of confusion. The board held that the signs were visually and phonetically similar and could not be distinguished from a conceptual standpoint due to the abstract nature of the earlier mark.
The applicants appealed to the General Court.
Decision
The court took into account all the criteria necessary for the appreciation of a risk of confusion.
First, it con rmed that the relevant public had an average degree of attention, and that the likelihood of confusion had to be assessed based on the perception of the German, Slovak and Czech-speaking part of the public. The court then con rmed that the goods were similar, as held by the board.
With regard to the comparison between the signs, the court proceeded to carry out a more detailed analysis:
Visual similarity
- The applicants argued that there was no risk of confusion between the signs on the following grounds:
- the presence of the circum ex accent, unknown to the relevant public, would be visually memorable for the consumer; the gurative elements in the earlier mark – three rhombuses separating the letter ‘A’ and the sequence ‘MEN’ – reinforced the visual differences between the signs;
- in line with consistent case law, small differences between short signs – here, the addition of the nal letter ‘N’ – would increase the overall differences between them.
The Board of Appeal had considered that the signs were similar from a visual standpoint due to the presence of the same three letters, which formed the entirety of the contested sign. As the letter ‘N’ appears in nal position, it would have a visually lower impact on the relevant consumer. Finally, as verbal elements leave a greater impression on consumers than gurative elements, the rhombuses would be perceived as purely decorative elements.
The court upheld the arguments put forward by the Board of Appeal and con rmed that the signs were similar from a visual point of view.
Opponent’s prayers are not answered as General Court recognises strength of term ‘amen’ | World Trademark Review
Phonetic similarity
The applicants alleged that the signs differed phonetically as they did not share the same rhythm: the sign ÂME would be pronounced as one syllable, whereas the sign AMEN consists of two syllables.
However, the court con rmed the Board of Appeal’s position, nding that the relevant public, not being French-speaking, would pronounce both marks in two syllables.
Conceptual similarity
The applicants contested the Board of Appeal’s position, whereby the terms ‘âme’ and ‘amen’ would not be distinguished from a conceptual point of view. According to them, the term ‘amen’ would be immediately understood by the relevant consumer as meaning “so be it!”. However, the board considered that, when not associated to another term such as ‘prayer’, the term would not possess any meaning. Even if it were understood as being linked to religion, which deals with the soul (‘âme’ being the French term for ‘soul’), the terms would then share a similar concept.
The court rejected the board’s reasoning, considering that the term ‘amen’ possesses a clear and determined meaning which the relevant public would immediately understand, even in a non-religious context – unlike the contested sign. Consequently, the marks were different from a conceptual point of view.
Overall comparison
When appreciating the risk of confusion, the EUIPO must consider all of the relevant factors, and the presence of visual, phonetic and conceptual similarities will result in a risk of confusion. In its examination, the Board of Appeal considered that the term ‘amen’ was too abstract to outweigh the visual and phonetic similarities between the signs.
In response to this point, the court recalled that:
“conceptual differences between two signs may counteract phonetic and visual similarities between them, provided that at least one of those signs has a clear and specic meaning for the relevant public, so that that public is capable of grasping it immediately.”
Thus, it held that, as the term ‘amen’ would be understood by the public, it could not be considered as abstract and would not escape the attention of the relevant consumer.
Therefore, the court concluded that there was no risk of confusion.
Conclusion
This decision highlights the interesting and often forgotten principle that the presence of conceptual differences can, in certain cases, counteract visual and phonetic similarities – though in practice, it is rare for the conceptual analysis to override the consideration of the other two factors. It is thus crucial to keep in mind that, even where the signs have strong visual and phonetic similarities, the conceptual differences should not be underestimated in the assessment of the risk of confusion.
Mélanie Villanova
INLEX IP Expertise
Marianna Kull
INLEX IP Expertise