In an interesting decision from October 2020, the EU General Court considered that there was no likelihood of confusion between the signs ‘Athlon Custom Sportswear’ and ‘DECATHLON’ pursuant to Article 8(1)(b) of Regulation 2017/1001 (the EU Trade Mark Regulation (EUTMR)). In particular, it reasoned that, where the elements of similarity between two signs result from a common weak distinctive component (‘ATHLON’ in this case), the impact of those elements on the global assessment of the likelihood of confusion is in itself low.
Background
In December 2016, Athlon Custom Sportswear, applied to register the following figurative sign as an EU trade mark (EUTM):
Registration was sought for various goods in Classes 25 (clothing and hats) and 28 (sporting articles and equipment) of the Nice Classification.
In 2017, Decathlon (the Applicant) filed an opposition pursuant to Article 8(1)(b) of the EUTMR in relation to its earlier EUTM ‘DECATHLON’ covering goods in Classes 25 (clothing and caps) and 28 (gymnastic and sporting articles except clothing, mats and shoes, except those relating to Decathlon events) of the Nice Classification.
In 2018, the Opposition Division upheld the opposition for all the goods on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of the EUTMR.
Athlon Custom Sportswear appealed the decision to the EUIPO Second Board of Appeal (the Board). In November 2018 it withdrew its application for registration in respect of goods in Class 28 and stated that the goods in Class 25 for which registration was sought corresponded to the following description: ‘athletic clothes and hats’.
In 2019, the Board considered that there was no likelihood of confusion and annulled the earlier decision.
The Applicant appealed to the General Court arguing that the Board had carried out an incorrect assessment of the dominant elements and of the visual and the conceptual similarities between the two marks and, as a result, of the likelihood of confusion between the signs.
The General Court’s decision
The General Court first considered that, for the purpose of assessing the likelihood of confusion, the relevant territory would be the entire EU and the public that whose level of attention is normal. In terms of visual, aural, and conceptual similarities, the Board observed that likelihood of confusion must be assessed by means of a global appreciation, on the basis of the overall impression given by the signs, in particular their distinctive and dominant components.
So far as concerns the dominant elements of the signs at issue, the General Court observed that consumers would pay greater attention to the beginning of a mark rather than its end, the initial part of a mark normally having a greater impact, in particular visually, than the final part. In this sense, the General Court considered that, from a visual point of view, the figurative element was not insignificant, since it formed the beginning of the mark applied for and, due to its size, it occupied a significant position in that mark and was not overshadowed by the subsequent stylised word. Furthermore, the figurative element of the mark applied for had no relationship with the goods and could not be considered descriptive of those goods. Therefore, the figurative element and the stylised word element in the mark applied for were more important from a visual standpoint in the overall impression given by that mark. In all this, the differentiating elements between the two marks were considered more important than the element of similarity, namely ‘athlon’. The General Court therefore considered that there was a very low degree of visual similarity between the marks.
The parties did not dispute the fact that the signs were phonetically similar to an average degree.
From a conceptual standpoint, the General Court considered that the Board had been correct in holding that, for part of the relevant public (comprising the English-speaking public), the word ‘decathlon’ would be associated with a competition in which athletes compete in various sporting events. The word ‘athlon’ means ‘a contest’ in Greek. Part of the relevant public might associate that word with sports competitions, as the element ‘athlon’ is a commonly used suffix, in particular in English, in relation to athletic events, the number of which is indicated by a prefix. The words ‘decathlon’ and ‘athlon’ were therefore considered inherently descriptive of the athletic goods at issue. Consequently, for the part of the relevant public that would attribute a meaning to the word elements of the signs at issue, it found that those signs have a certain conceptual similarity, but that the word element at the origin of that similarity (‘athlon’) had a weak distinctive character.
Enhanced distinctiveness
The Applicant sought to prove that the earlier mark had enhanced distinctiveness by means of various pieces of evidence and references to two cases that it had included as annexes to the application.
According to the General Court, the documents produced did not show that the earlier mark would have enhanced distinctiveness because they suggested that the earlier mark is associated with the Applicant’s retail services and not with the goods sold by the Applicant. In relation to the decisions, the General Court noted that the decision from 1998 did not concern goods at issue in the present case and the decision from 1997 was irrelevant since it was delivered 15 years before the filling date of the contested trade mark application.
The Applicant had therefore failed to demonstrate enhanced distinctive character of the earlier mark for the goods at issue.
Likelihood of confusion
The Applicant submitted that it had demonstrated that the dominant element of the mark applied for would be the word ‘athlon’ and therefore that both marks would be visually similar to a high degree. It considered that it had also proved that the word ‘decathlon’ is distinctive and that the earlier mark enjoyed enhanced protection, at least for a significant part of the public that does not understand the meaning of that word.
According to the General Court, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and of the goods or services. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa.
In the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight and the extent of the similarity or difference between those signs may depend on their inherent qualities.
In the present case, the visual aspects dominated for two reasons.
First, where the elements of similarity between two signs are the result of the fact that they have a weak distinctive component in common, the impact of those elements of similarity on the global assessment of the likelihood of confusion is itself low. In the present case, the word element ‘athlon’, which was common to the signs at issue, had a weak distinctive character and would therefore not be perceived as an indication of commercial origin. Consequently, the visual differences, which arise primarily from the stylisation of the common word element and of the figurative element in the mark applied for, would dominate in the overall impression on the relevant public created by the signs. Those differences would therefore counteract the phonetic similarity and the conceptual similarity resulting from the common word element ‘athlon’ and the concept to which it refers.
Secondly, the marketing circumstances were also a relevant factor in the application of Article 8(1)(b) of the EUTMR. In the present case, the goods at issue (athletic clothes and hats) were in a sector in which visual perception of the marks would take place prior to purchase. Therefore, the visual aspect was of greater importance in the global assessment of the likelihood of confusion.
In light of the weak distinctive character of the element ‘athlon’, the dominance of very weak visual similarities, and the circumstances under which the goods in question were marketed, it followed that there was no likelihood of confusion.
Comment
This decision exposes the difficulties that trade mark holders may face when dealing with trade marks that possess weak distinctive elements. In the present case, the limited distinctiveness of the shared element between the signs and the inability to demonstrate the enhanced distinctiveness of Decathlon’s trade mark sealed the fate of the opposition, at least for the time being. Trade mark holders: beware!
Published on IPKat