CJEU: Descriptiveness of a Common Element of EUTMs in One EU Language Not Sufficient to Rule Out Confusion

In a judgment dated May 5, 2017, concerning an opposition case involving the EU Trade Marks (EUTMs) OUTDOOR and OUTDOOR PRO, the General Court (GC) considered the impact of the descriptive meaning of the term “outdoor” on the likelihood of confusion between the marks. T-224/16, ECLI:EU:T:2017:314.

Messe Friedrichshafen, a German exhibition company, filed an EUTM application for the figurative sign Out Door, for, among other things, arranging and conducting trade fairs and some related services in Class 35.

The application was opposed by El Corte Ingles, SA, a Spanish department store chain, on the basis of their earlier word mark EUTM OUTDOOR PRO, registered for identical and similar services.

The EUIPO Opposition Division upheld the opposition for certain services, and that was partially confirmed by the Board of Appeal (BoA). The applicant appealed before the GC, alleging that the term “outdoor” was descriptive for the services at issue, even for the part of the public in the EU not having a good command of English. The term ”pro” in the earlier mark was also a weakly distinctive general term. According to Messe Friedrichshafen, by neglecting these circumstances as well as the visual differences between the two marks and the coexistence of similar marks, the BoA wrongly established likelihood of confusion.

The GC rejected the appeal and concurred with the BoA’s reasoning that the word element “outdoor” would not be understood by the non-English-speaking part of the relevant public. Similarly, a part of that public would not perceive the term “pro” as an abbreviation for “professional” or as meaning “for.” The GC concluded that, at least for the public that did not understand its meaning, the earlier mark was to be deemed distinctive to a normal degree. Therefore, the similarities between the marks were sufficient to establish a likelihood of confusion.

The decision demonstrates an important aspect of the EUTM system, which has to accommodate the national and linguistic diversities within the EU. A mark can have a meaning for a part of the EU public and be incomprehensible for the rest of the consumers. At the same time, it is more difficult to establish confusion among consumers where similarities between marks pertain solely to nondistinctive elements. Consequently, a risk of confusion among EU consumers exists if the marks are normally distinctive at least for the part of the public that does not understand their meaning.

By Dimitar Batakliev, PETOŠEVIĆ Bulgaria Head of Office

This article first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).