(This article was written for the World Trademark Review. The original article was published on April 11, 2016.)

In LG Developpement v OHIM, the EU General Court has upheld a finding by the OHIM Board of Appeal of a likelihood of confusion between the trademark MINI and the figurative mark MINICARGO.

Bayerische Motoren Werke AG (BMW) opposed a Community trademark application by LG Developpement (LGD) for the trademark MINICARGO and device covering “apparatus for locomotion by land, namely trailers” in Class 12 on the basis of its earlier Community trademark MINI for “land vehicles; parts, components and accessories for all the aforesaid goods” in Class 12. The Opposition Division of OHIM rejected the opposition.

BMW appealed and the OHIM Fourth Board of Appeal annulled the decision of the Opposition Division and found a likelihood of confusion. In its considerations, the board held that the relevant public in this instance consisted of both specialists and the general public throughout the European Union. As regards the comparison of the goods, it took the view that the goods covered by the respective marks were identical. When comparing the marks, the board found that there was an average degree of visual, phonetic and conceptual similarity between them. Given those factors, and having found that the earlier MINI mark possessed a reputation and consequently was highly distinctive, the board concluded that there was a likelihood of confusion, at least for the relevant public in the United Kingdom.

Unhappy with this decision, LGD appealed to the EU General Court. LGD submitted that the board had erred in finding a likelihood of confusion – specifically, with regard to the definition of the relevant public, which it contended was the French public. It also maintained that the board was wrong to conclude that the goods covered by both marks were identical. In addition, LGD contended that the board had erred in finding that the differences between the marks at issue were insufficient to rule out any likelihood of confusion.

The EU General Court held as follows:

  • Relevant public – the board’s choice to base its assessment on the UK public was upheld on the basis that, according to settled case law, for a Community trademark to be refused registration it is sufficient that a relative ground for refusal exists in part of the European Union. It follows that the board could, for reasons of procedural economy, restrict the assessment of the likelihood of confusion to the UK public.
  • Comparison of the goods – LGD criticised the board’s finding that the applicant’s goods, namely trailers, were identical to those of the earlier mark which included, among other things, land vehicles. It argued that the target public for the respective goods was completely different and that the goods could not be considered to be identical or similar. In particular, it was argued that MINI was associated with the luxury goods market, whereas MINICARGO covered goods intended for people seeking to save money. The board stated that trailers are part of the broader category of land vehicles, which is not limited to a particular market, namely the luxury goods market. This was upheld by the General Court.
  • Comparison of the marks – while upholding the findings of visual and phonetic similarity, the General Court disagreed with the board regarding conceptual similarity. However, in light of the average degree of visual and phonetic similarity, the board’s error as regards the degree of conceptual similarity between the marks was not held to be capable of affecting the overall finding of an average degree of similarity between the marks. Rejecting LGD’s contention that “acknowledging that there is a likelihood of confusion is tantamount to giving the intervener a monopoly over the use of the word ‘mini’ in respect of the goods at issue even though that word is in everyday use”, the General Court held that since the earlier mark possessed enhanced distinctiveness and a likelihood of confusion had been established, this allowed its owner to oppose the use of the word ‘MINI’ in the mark applied for. Finally, the General Court upheld the board’s finding that earlier contrary decisions of the French Intellectual Property Office and Paris Court of Appeal related only to the perception which French consumers had of the marks in question, which was irrelevant in the assessment of likelihood of confusion relating to the relevant public in the United Kingdom. In addition, the board was not bound by the decisions of national authorities.

On the basis of the foregoing, the board’s findings were upheld and LGD’s appeal was dismissed.

In keeping with a number of earlier decisions, the General Court in this case has once again reiterated the principle that a mark which is wholly contained in a later application can succesfully prevent its registration  (Ecoblue (Case T-281/07), First-On-Skin (Case T-273/08)). It is, however, interesting to note that the figurative elements contained in LGD’s application appear to have been totally disregarded by the board as well as the General Court in this instance – both rejecting the Opposition Division’s initial finding that the word element of the contested sign (or its parts ’mini’ and ‘cargo’) were considered to be weak, so that the distinctiveness of the sign lay in its graphical representation (ie, the colour and figurative element). This case also serves to emphasise the importance of taking into account the position of the EU as a whole and not only the particular jurisdictions of significance to the parties in question.