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General Court Rules on Likelihood of Confusion between EU Trade Mark and Registered Community Design – Case T-695/15

General Court Rules on Likelihood of Confusion between EU Trade Mark and Registered Community Design – Case T-695/15

10/10/17

In 2011 Ferrero SpA (“Ferrero”) applied to cancel a Community design owned by BMB sp. z.o.o. (“BMB”), protecting a small plastic box with a flip top lid.  In support of the Application for Cancellation Ferrero relied upon an earlier trade mark registration protecting a 3-Dimensional trade mark, registered in March 1974, with effect in France.  The registration protected the trade mark insofar as “confectionery goods” in class 30 are concerned. 

In 2012 the Cancellation Division of the EU Office granted the cancellation on the basis of the earlier trade mark rights.  It considered that there existed a likelihood of confusion between the design and the trade mark, on the part of the relevant public. The decision was appealed and in September 2015 that appeal was dismissed by the Third Board of Appeal of EUIPO, which held that, given the high visual similarity of the trade mark and the design at issue and in light of the fact that the goods in question had at least a high degree of similarity, there was a likelihood of confusion on the part of the relevant public. 

BMB made a further appeal to the General Court.  There were three pleas in law; (1) the Board of Appeal had founded its decision on an incorrect legal basis, (2) the Board of Appeal had erred when it found that there was a likelihood of confusion and, (3) the Board of Appeal failed to have regard to evidence it should have taken into account.

With regard to the first plea, the Applicant’s argument was that the Board of Appeal’s assessment should have been made on the basis of the applicable French Intellectual Property Code, rather than the EU Regulation.  In its defence the EUIPO contended that in fact the Board of Appeal had assessed the facts in light of the French Intellectual Property Code and the sole reference to the EU Regulation was a formal error.  The General Court held that this was insufficient to justify an annulment of the decision. 

The General Court assessed the second and third pleas together.  It reiterated that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that the average consumer must rely upon his imperfect recollection of the marks in question and that his level of attention is likely to vary according to the nature of the goods or services in question; the criteria of assessment of the distinctive character of a 3-dimensional mark is no different to those applicable to other categories of marks and a likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case.

The General Court dismissed the Applicant’s submission that the Board had been incorrect to conclude that the relevant public would have a lower than average level of attention when it came to the issue of confectionery. The Court held that the Board had been correct to consider that the level of attention of the relevant public, on account of the low price and frequent purchase of such confectionery, was rather low.

The General Court also rejected the Applicant’s argument that the edges of the shape represented in the trade mark registration where a dominant element of that trade mark that should have been considered as such by the Board.  The Court concluded that the Board had correctly taken into account all of the relevant elements, including the distinctive and dominant elements of the contested design. 

The General Court reviewed in detail the Board of Appeal’s considerations regarding similarity between the design and the trade mark and held that the fact that the contested design is represented filled with sweets cannot constitute a relevant point of visual comparison, since the design is registered merely for the box or container of those sweets; the sweets are not a specific component of the Community design which may be taken into account.  There were differences between the design and the trade mark (principally regarding the curved edges) but this was a difference of secondary importance which could not override the similarities, particularly in view of the notion of imperfect recollection.  The Board of Appeal had committed no error when it held that there existed a likelihood of confusion. On that basis the second and third pleas were also rejected.