This article first appeared on WTR Daily, part of World Trademark Review, in (November 2022). For further information, please go to www.worldtrademarkreview.com

In Société Elmar Wolf v European Union Intellectual Property Office (EUIPO) (Case T‑596/21), the General Court (NinthChamber) has dismissed the action brought by Société Elmar Wolf (‘the applicant’) seeking the annulment of the decision of theFourth Board of Appeal of the EUIPO of 5 July 2021 (Case R 2834/2019‑4) related to the opposition between the applicant andFuxtec GmbH.

Background

Fuxtec obtained an international registration designating the European Union in respect of the following fi gurative sign,covering goods and services in Classes 4, 7, 8, 12 and 35:

The applicant fi led a notice of opposition in respect of all the claimed goods and services on the basis of several earlier marks,including two fi gurative marks consisting of the following fi gurative element in Classes 7, 8 and 35, and on which theOpposition Division focused its analysis:

The applicant invoked Article 8(1)(b) of Regulation 207/2009.
The opposition was rejected by the Opposition Division, which ruled out the existence of a likelihood of confusion between thesigns. The decision was confi rmed by the Board of Appeal.

The applicant challenged the Board of Appeal’s decision before the General Court.

Decision

The court had to decide whether the Board of Appeal had infringed Article 8(1)(b) of the regulation.

Comparing the marks at issue, the General Court held that the Board of Appeal was right in fi nding that the confl icting signswere visually similar at most to a low degree. The court pointed out that the earlier marks consisted of the representation of thehead of a canine. The representation of the head of a canine in the earlier marks was very naturalistic and detailed, capable ofbeing perceived as a wolf, a fox or a dog, with a menacing expression.

By contrast, as already pointed out by the Board of Appeal, the shape represented in the contested sign was rather abstract.The court stated that the representation of a head in the contested sign was obviously less realistic and considerably morestylised than the silhouette illustrated in the earlier marks, which represents some of the main attributes – a slightly open mouthand a menacing expression – of the representation of the head of a canine.

In the opinion of the General Court, it was unlikely that the average consumer, who normally perceives a mark as a whole anddoes not carry out an analysis of its details at the time of purchase, would be capable of spontaneously associating thecontested sign with the head of an animal, or even with the head of a canine or of a specifi c kind of animal. Such an associationwould require, according to the court, a mental effort on the consumer’s part that went beyond that expected at the time ofpurchase.

Such considerations also affected the conceptual comparison between the marks. While the earlier signs evoked the concept ofthe head of a canine, the opposed mark was instead abstract and, even though it may evoke the head of an animal, was nottherefore liable to be associated with the same concept of the head of a canine by the relevant public. The signs were thusfound conceptually dissimilar.

Since the marks at issue were fi gurative marks, a phonetic comparison between them was not possible.
On the basis of the above considerations, even assuming an identity between the goods, the court found that the Board ofAppeal had been right in fi nding that no likelihood of confusion existed between the confl icting signs.
The General Court thus dismissed the action.