A decision issued recently by the Court of Justice of the European Union (C-91/14 P) (Court of Justice) concluded another stage in a dispute between Przedsiębiorstwo Handlowe Medox Lepiarz Jarosław, Lepiarz Alicja sp.j. (PH Medox) and OHIM and Henkel Corp. (an intervening party). The dispute concerned the following graphic designation:
This designation was compared against the word trademark “SUPERGLUE”, registered in the Benelux countries.
In a ruling handed down in the case on 11 December 2013 (T-591/11), the European Union General Court (EU General Court) dismissed a complaint by PH Medox seeking the invalidation of a decision of the OHIM Fourth Board of Appeal. In the stance expressed in the decision of that Board, a likelihood of consumers being misled existed. PH Medox moved that the Court of Justice overturn the contested ruling and refer the case back to the EU General Court for reconsideration. PH Medox accused the EU General Court of having ruled on the similarity between the designation submitted for registration as a trademark and an earlier trademark, and also argued that the EU General Court had not made an assessment of what minimum degree of similarity between the marks in question would enable it to be deemed in this case that there was a likelihood of consumers being misled. PH Medox also questioned the visual and conceptual similarity of the marks being compared, and stated that the trademark, which has only weak or very weak distinctiveness, does not present a similarity that could be misleading.
The Court of Justice, however, did not share the stance presented by PH Medox. In the Court of Justice’s view, the distinctiveness of the earlier trademark is but one of a number of elements taken into consideration when evaluating the existence of a likelihood of consumers being misled. There does exist, however, an overall evaluation of that likelihood. The concept of similarity should be interpreted in relation to the likelihood of consumers being misled, an assessment of which largely depends on the recognisability of a trademark on the market and the degree of similarity between the trademark and the designation submitted, as well as between the goods or services so designated.
In the above ruling, the EU General Court confirmed the conclusion of the Board of Appeal, in light of which the weak distinctiveness of the phrase ‘super glue’ does not rule out the existence of a likelihood of consumers being misled. According to the Court of Justice as expressed in its ruling, the EU General Court did not misinterpret the law by confirming the conclusion of the Board of Appeal that the two conflicting marks are identical with each other and that they are visually, phonetically, and conceptually similar.
The Court of Justice also held that the actions of PH Medox in accusing the EU General Court of an erroneous assessment of the similarity between the designations and of the likelihood of consumers being misled was, in fact, an attempt to persuade the Court of Justice to re-analyse the assessment of the facts of the case made by the EU General Court. In light of the circumstances of the case, the Court of Justice reached that conclusion even though PH Medox had not shown, or even raised, that the EU General Court had overlooked factual circumstances or evidence.