In a recent decision, the General Court held that the trade mark consisting of a figurative animal (right) does not cause a likelihood of confusion with respect to Elmar Wolf's earlier figurative trade mark (left), as they are visually only similar to a low degree and are conceptually dissimilar. There was no dispute regarding the relevant public nor with respect to the goods and services, which were considered identical: gardening tools and related services. This decision is in line with what the Opposition Division and the Board of Appeal of EUIPO had already found.
Regarding the similarity between the signs, the General Court firstly disregarded the black circle surrounding the earlier trade mark, as it is barely perceptible to the consumer and will not be memorised by him or her. The earlier trade mark thus consists of the representation of the head of a canine (para. 37). By contrast, the shape of the contested sign is "rather abstract" and "considerably more stylised" and as a result, it is unlikely that the average consumer will be capable of spontaneously associating the contested sign with the head of an animal, or even with the head of a canine, without engaging in an analysis which goes beyond that expected at the time of purchase (para. 38). Therefore, the signs are visually only similar to a low degree. As the earlier trade mark represents the head of a canine, and the contested sign does not, there is also no conceptual similarity (para. 46).
The General Court did acknowledge that a "non-negligible part of the relevant public" could perceive the contested sign "as the contours of the front view of a face, ears pointing upwards, a muzzle pointing downwards and eyes." But, as mentioned, it still found little visual and no conceptual similarity, primarily because the representation of the head of the contested sign "is obviously less realistic and considerably more stylised than the silhouette illustrated by the earlier marks […]" (para. 38).
We do not think this is a realistic approach and results in a rather restricted protection for figurative trade marks. Firstly, the two signs will almost never been seen next two each other. Secondly, we believe that consumers when confronted with the younger sign for gardening tools, will think of the trade mark. Why? Because the overall image of both figures is in fact quite similar, notwithstanding the less stylised shape of the earlier mark. All in all, also because of the identical goods and services, another outcome would not have surprised.
Vincent Wellens
Partner
