In a ruling of 26 July 2017 in case C-84/16 P, the Court of Justice upheld a ruling by the EU General Court invalidating a decision of the EUIPO Fourth Board of Appeal dismissing an opposition to the registration of the word-figurative trademark “XKING”.
That ruling benefits the company Compagnie générale des établissments Michelin (“Michelin”) – the entity that submitted the opposition to the registration in a proceeding before the EUIPO and is against the company Continental Reifen Deutschland GmbH (“Continental”), a market competitor of Michelin and the entity that applied for the registration of the contested mark.
On 15 February 2012, Continental submitted an application to the EUIPO for the word-figurative mark “XKING”, seen below:
The application was made for goods belonging to class 12 of the Nice Classification (tires). On 18 June 2012, Michelin submitted an opposition to the registration, based on the prior registration of the international trademarks and the French trademark “X”, registered for class 12 of the Nice Classification (tires).
In a decision of 8 July 2013, the EUIPO Opposition Division found in favour of the entirety of Michelin’s opposition. That decision was then successfully appealed against by Continental – the EUIPO Fourth Board of Appeal amended the decision of the Opposition Division and dismissed the opposition in its entirety. The Board of Appeal indicated that the similarity or identity of the goods the disputed marks refer to was offset by the differences between the marks themselves and the low level of distinctiveness of the French mark belonging to Michelin.
Michelin then filed an action of annulment of the decision with the General Court, which, in a ruling of 8 December 2015, invalidated the decision of the EUIPO Fourth Board of Appeal. The court found that, in the word mark “XKING” for which Continental sought registration, the letter “X” is the dominant element. The court then compared the letter “X” as it appears in the mark “XKING” to the French trademark belonging to Michelin and reached the conclusion that the letters are visually similar to each other, making the marks similar to each other when considered as a whole. The court also emphasised the phonetic similarity of the contested marks, evaluating this as “average” – that is, differently than the EUIPO Board of Appeal, which had deemed the similarity as “slight”.
In its appeal to the Court of Justice, Continental first claimed there had been a defective assessment of the documentary evidence concerning the use of the mark “X” by Michelin. In the disputed ruling, it was stated that the sign does not indicate any technical features of the product (tires), when in fact it is used to describe the type of tread. In the view of the appellant, that error led to an improper evaluation of the distinctiveness of the mark “X”, which is in fact much lower than what the court accepted. Moreover, the appellant questioned the court’s finding concerning the letter “X” as the dominant element in the mark “XKING”. In Continental’s view, the element “KING” is the most important element of the mark, especially when one considers its length and the prominent place it holds when the mark is perceived as a whole.
In its justification to the ruling of 26 July 2017, the Court of Justice pointed out that the General Court had indeed made a faulty assessment of the documentary evidence concerning the use of the mark “X” by Michelin. Nevertheless, in the view of the Court of Justice that error did not affect the content of the ruling, and it therefore did not constitute a basis for overturning it. In turn, the Court of Justice found that the remaining claims of Continental were aimed at questioning factual determinations accepted by the General Court as grounds for its ruling, which is inadmissible.
In accordance with established case law, the competence of the Court of Justice is solely revisionary in nature, while an assessment of the facts and evidence, including the circumstance of what element of a trademark should be deemed dominant, falls within the remit of the General Court. All of the above circumstances led to the appeal brought by Continental being dismissed. The decision by the EUIPO Fourth Board of Appeal dismissing Michelin’s opposition was finally invalidated, while the decision of the Opposition Division refusing to register the disputed mark was upheld in force.