On 18th June 2013 the General European Court analysed a case No. T-338/12 regarding the figurative trademarks K9 and K9 PRODUCTS and their misleading similarity. The General Court stated that the Boards of Appeal made the right conclusion that the trademarks do not evoke the likelihood of confusion despite their great phonetic similarity. The General Court rejected the claim and upheld the decision made by the Fourth Board of Appeal.
Previous trademark Protested trademark
The applicant Julius-K9 bt filed an application to the General European Court regarding the registration of the figurative trademark K9 PRODUCTS for goods of classes 18 and 25. The proprietor Rocket-Dog Brands LLC of the previous European Community trademark K9 applied for the declaration of the invalidity on the grounds of the the likelihood of confusion. The Cancellation Division of the Office of Harmonization in the Internal Market declared the invalidity of the trademark on the grounds that the comparative trademarks are characterised by a weak visual and high phonetic degree of similarity. The Cancellation Division indicated that the goods of classes 25 and 18 marked by comparative trademarks are identical and similar. Finally, taking the average distinctive mark of the earlier trademark into account it was decided that there is a possibility to confuse these marks. The applicant appealed against this decision of Cancellation Division to the Boards of Appeal. The Fourth Board of Appeal anulled the decision of the Cancellation Division and stated that the comparative trademarks are not similar. Following this decision, the proprietor of the later trademark requested General European Court to annul this decision and acknowledge these trademarks as misleadingly similar.
The General European Court rejected the claim and upheld the decision of the Boards of Appeal. Taking all reasoning into account it was stated that the Boards of Appeal reached the right conclusion that the marks are not misleadingly similar despite their great phonetic similarity. The court determined that the Boards of Appeal correctly stated that the goods marked with the comparative trademark are bought after their visual inspection, therefore a conclusion is made that the visual similarity has a greater importance in determining the likelihood of confusion. After assessing marks’ visual similarity it was stated that in the previous mark the main dominating trademark’s element was a visual element (a dog holding a bone), therefore, because of the different main visual elements, the trademarks were acknowledged as visually similar only in low degree. Respectively, it was stated that even if there is a strong phonetic similarity between the comparative trademarks and the goods marked with marks are identical and similar, these similarities are weighed down with conceptual differences and low visual similarity which determine the absence of the likelihood of confusion.
This decision is a useful reminder when it comes to compare trademarks marking clothes. In other words, the visual marks’ similarity has a greater importance in determining the likelihood of confusion.