Reputation of trade mark irrelevant to similarity to other brand

The Court of Justice of the EU (CJEU) confirmed the position in a ruling earlier this summer in which it annulled a decision taken by the EU Intellectual Property Office's (EUIPO's) Board of Appeal and set aside an EU General Court judgment that had endorsed the Board of Appeal's decision.

The CJEU's ruling came in a case in which there is a dispute over a trade mark application made by China Construction Bank Corp (CCB).

CCB has applied to register a figurative sign incorporating the letters 'CCB' as an EU trade mark to cover services including financial affairs, monetary affairs and banking. Groupement des cartes bancaires (GCB) has opposed the application citing its own EU trade mark for a figurative sign incorporating the letters 'CB'. GCB's registration applies to types of payment card transaction services, and other financial services in the same class of goods as CCB's application concerns.

Under EU trade mark law, there are circumstances in which an application for trade mark protection must be rejected following opposition raised by the owners of an earlier registered trade mark.

One example includes "if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark".

After GCB raised its opposition to CCB's application, the case was considered by the Opposition Division at the EUIPO and it initially sided with GCB. CCB appealed, but this was dismissed by the EUIPO's First Board of Appeal.

The appeal board determined that the evidence showed that the relevant public in France identified GCB's trade mark as synonymous with 'CB' cards for transactions and that, as a result of that reputation, GCB's mark would be perceived by the relevant public as being the letters 'CB', despite its highly stylised appearance. The board also held that the figurative element of CCB's sign was merely incidental to the dominant element, being the letters 'CCB'. On the basis of these findings, the board held that both CCB's and GCB's signs were similar. Because of the similarity of the signs, the identity of the services covered by the signs and the reputation of GCB's mark in France, the Board of Appeal decided a likelihood of confusion could not be ruled out.

CCB appealed to the General Court, which upheld the decision of the Board of Appeal. CCB then appealed to the CJEU on various grounds, including that the General Court had erred in law in its assessment of the likelihood of confusion. CCB argued that the General Court should not have taken the reputation and distinctive character of GCB's mark into account when assessing the similarity of the signs.

The CJEU agreed with CCB. It held that similarity and reputation were factors "fundamentally different in scope" and the examination of one did not allow conclusions to be drawn concerning the other.

According to the court, under EU trade mark law, reputation and distinctive character are relevant only to the assessment of the likelihood of confusion between the trade mark and the later sign. They are not to be taken into account in assessing the similarity of the mark and sign, which is a separate issue to be considered which can also be relevant to other grounds of opposition to trade mark applications under EU trade mark law.

The court said that to assess similarity, only a visual, phonetic and conceptual comparison must be made of the mark and sign, based on the overall impression which they make, having regard to their intrinsic qualities, on the memory of the relevant public. 

It was therefore incorrect in law to assess the similarity of the signs in light of the reputation of the earlier mark, the CJEU held, ruling that the Board of Appeal had not been entitled to infer from the reputation and distinctive character of GCB's mark that the word element 'CB' was dominant and should also, therefore, dominate the assessment of the similarity of the signs.

CCB also challenged before the CJEU how the likelihood of confusion had been assessed. It argued that the General Court had not properly identified the services in respect of which GCB's mark had a reputation. In particular, it had not given sufficient reasons for its finding that GCB's

mark had a reputation in respect of "financial affairs, monetary affairs and banking" when GCB's evidence did not establish that. This was significant because these services were essentially identical to those covered by CCB's sign and so it was in respect of these that there was a risk that the public might believe that the services offered by CCB under its sign originated from GCB or a connected undertaking.

The CJEU held that the General Court's reasons for its findings on this issue were inadequate and that this failing undermined its overall assessment of the likelihood of confusion. The CJEU therefore upheld CCB's appeal, set aside the judgment of the General Court and annulled the decision of the Board of Appeal.

A version of this article first appeared on WTR Daily, part of World Trademark Review, in June 2020.