This article first appeared in World Trademark Review Daily

In re Laura Food Srl v EUIPO, Bella Tawziaa II SLU ( T‑541/23), the General Court First Chamber maintained that in complextrademarks, the main figurative element cannot per se provide monopoly over an entire species, regardless of its actual applicationto the packaging.

Background

On 14 May 2020, Laura Food Srl filed an application with the EUIPO seeking registration for the following figurative sign:

On 2 September 2021, Bella Tawziaa II SLU filed an opposition against the EU trademark based on its earlier EU figurative mark,depicted below, registered in January 2015, which also covered goods in Class 30.

The Opposition Division rejected the opposition on 20 September 2022. However, Bella Tawziaa II SLU appealed, and the Board ofAppeal upheld the appeal.

Board of Appeal decision

The board determined that the relevant public comprised EU consumers with a below-average level of attention. It found that,while the marks were visually and phonetically dissimilar, they were conceptually similar to an above-average degree for English,French and Arabic-speaking EU consumers. The board concluded that there was a likelihood of confusion between the two marksfor the relevant public in the European Union.
At issue was the conceptual similarity, as the applicant contended that the only common element was the representation of lions,which were distinctively different. In contrast, the EUIPO argued that the Board of Appeal had correctly identified an above-averagedegree of conceptual similarity due to the lion representations.

General Cout decision

The General Court disagreed, noting the difficulty in perceiving the lions in the earlier mark and the obscure meanings of associatedterms for the relevant public. It concluded that the conceptual similarity was low.
In fact, the General Court found as follows:

“The assessment of the similarity between two marks means more than taking just one component of a compositetrade mark and comparing it with another mark. On the contrary, the comparison must be made by examining eachof the marks in question as a whole, which does not mean that the overall impression conveyed to the relevantpublic by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components(see judgment of 12 June 2007, OHIM v Shaker, C 334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).It is only if all the other components of the mark are negligible that the assessment of the similarity can be carriedout solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C 334/05 P,EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own ofdominating the image of that mark which members of the relevant public retain, with the result that all the othercomponents are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé vOHIM, C 193/06 P, not published, EU:C:2007:539, paragraph 43).
[Also,]
for the purposes of assessing the dominant character of one or more given components of a composite trademark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing themwith those of other components… (see judgment of 8 February 2007, Quelle v OHIM-Nars Cosmetics (NARS), T88/05, not published, EU:T:2007:45, paragraph 58 and the case-law cited).“

In conclusion, as an established position on confusing similarity, especially when ‘genus’ or, in this case, animal species are to betaken into account, it is wiser not to compare the marks by abstractly mentioning the species (eg, “lion”). This is true whencorporations need to weigh the nature of their monopoly, whereas obtaining registration for a lion as a figurative element does notnecessarily mean that no other lions could graze in the open field of our shelves.