This article first appeared on WTR Daily, part of World Trademark Review, in November 2022. For further information, please go to www.worldtrademarkreview.com.
24 November 2022
Legal updates: case law analysis and intelligence
The Board of Appeal found that there was a likelihood of confusion between L’Oréal’s mark K K WATER and the earliermark K for Class 3 goods
The General Court disagreed and annulled the board’s decision
When it comes to signs consisting of a single letter, it is more likely that the relevant public will easily perceive the differences between them
On 9 November 2022 the General Court issued its decision in L’Oréal v European Union Intellectual Property Office(EUIPO)(Case T-610/21).
The Opposition Division of the EUIPO rejected the presence of a risk of confusion, but the Board of Appeal reversed this decision. The applicant filed an appeal before the General Court.
The applicant raised a single plea in law: the infringement of Article 8(1)(b) of Regulation 2017/1001. The General Court’s analysis concerned only the comparison of the signs in question, as the parties did not contest the identical nature of the goods covered.
The court first recalled that, when analysing the presence of a risk of confusion between two complex signs, the assessment should consider not only the individual elements of the signs, but also the global impression conveyed by them. In the present matter, the applicant alleged that the EUIPO had not correctly carried out its analysis and omitted certain elements.
First, the applicant claimed that the Board of Appeal had not mentioned that the word elements of the contested trademark were in a pink-grey colour. The General Court accepted this argument, considering that the colour contributed to the different overall impression.
Second, the applicant argued that the word element ‘k water’ was not taken into consideration. The court held that the letter ‘K’occupied a dominant position. Consequently, the element ‘k water’ could be considered as secondary. However, it possessed a sufficiently distinctive character due to its particular structure and should therefore be taken into account in the comparison of the signs.
Third, the court considered that the addition of this sequence allowed to differentiate between the signs from a visual and phonetic standpoint, as the presence of this additional sequence could not be ignored. Moreover, even though the parties agreed that the dark background did not have an impact as it is commonly used in commercial settings, the General Court considered that the stylisation of the earlier trademark gave it “an air of movement or dynamism which is not present in the mark applied for”. Additionally, as the letter ‘K’ does not have any particular meaning, the presence of the sequence ‘k water’allowed for the signs to be distinguished from a conceptual perspective (ie, the mark applied for would be understood as referring to the concept of water).
Further, the General Court recalled that the signs in question are composed of a single letter and that the analysis for such signs is specific. For a trademark composed of one letter to be considered sufficiently distinctive, it must be highly stylised or accompanied by other elaborate figurative elements. Moreover, when considering short signs, all differences will be perceived by the average consumer as having a direct impact on the similarities between the signs. In the present matter, as the goods concerned are commercialised on a self-service basis, these differences between the signs would be immediately noticed by theconsumer.
Finally, the General Court pointed out that the principle of interdependence should not be applied mechanically. Even if the similarity of the signs could not be established, the identity of the goods would not be sufficient to find an overall risk of confusion. Therefore, the court considered that the Board of Appeal had made an error of appreciation in finding that there was a likelihood of confusion and annulled its decision.
The case is in line with settled case law whereby trademarks consisting of a single letter benefit from a low degree of protection. The addition of stylised or word elements, even presented in a secondary manner in relation to the dominant element, may be sufficient to exclude a risk of confusion.
Mélanie Villanova and Marianna Kull Inlex IP Expertise