The Continental vs Michelin[1] appeal at the Court of Justice for the European Union (CJEU), decided a few months ago arose from an opposition by Michelin to Continental’s European Union Trade Mark Application for the registration of in relation to ‘Tyres; Inner tubes for tyres’.

Michelin relied, inter alia, on its earlier French trade mark registered on 27 March 1990 for in relation to ‘Envelopes, inner tubes for pneumatic tyres’.

In its opposition, Michelin relied on the similarity of the marks and the goods and also on its reputation in its trade marks. The opposition was upheld to the extent of Michelin’s French trade mark.

Continental filed an appeal against the opposition decision to the Board of Appeal. The Board of Appeal allowed the appeal and rejected the opposition. Michelin filed an appeal at the General Court (GC) against the decision of the Board of Appeal.

The main findings of the GC

The GC allowed the appeal, finding a likelihood of confusion on the basis of the similarity of the marks and the goods, thereby rejecting Continental’s application for registration of its trade mark.

The GC considered that the part ‘’, is represented in the trade mark as separate and distinct from the part and it would be understood by the public as being laudatory of the goods of tyres and inner tubes of tyres. The element KING was considered to have a weak distinctive character in Continental’s trade mark. The GC considered that overall the part X was the dominant and distinctive part of Continental’s trade mark and also that Continental’s X was similar to Michelin’s X, both being white with a black outline and that overall the marks were similar.

The GC also considered the inherent distinctiveness of Michelin’s X to be normal as it was a stylised letter and would not be perceived as being descriptive of any characteristics of tyres or their inner tubes, although the GC did consider the evidence of use Michelin had filed in support of its opposition.

Continental appealed the GC’s decision.

The main findings of the CJEU

The GC’s view on the distinctiveness of Michelin’s X was criticised by the CJEU, as Michelin’s evidence did in fact show that its X was used in conjunction with other letters or independently to indicate tread pattern and hence it described technical features of Michelin’s tyres and had weak distinctiveness.

Despite finding that Michelin’s X had a low/weak inherent distinctiveness, the CJEU declined to interfere with other factual findings in the GC’s decision. The CJEU stated that the GC’s finding, that there was a likelihood of confusion on the part of the general public by Continental’s use of its XKING for tyres, was not based solely on the issue of inherent distinctiveness, but on an assessment of other factors as well. The GC’s decision had taken into account that the goods of the parties were highly similar or even identical and the marks were similar overall to an average degree, and the CJEU held that Continental’s appeal did not show why these factual findings should be struck down.

Importantly the CJEU reiterated that a likelihood of confusion cannot be precluded where the distinctive character of the earlier mark is weak, and that contrary to Continental’s assertions there is no general rule in the case-law of the Court of Justice that a single letter of the alphabet constitutes a weakly distinctive element of a sign.

What this means for the trade mark owners and the automotive industry

This case shows that single letter marks, or even weak marks may well be used as a basis of challenge to a subsequent application. The court would have to assess each case on its own facts and whether there are obvious similarities between the dominant aspects of the marks and if other factors like similarity of goods or services support the multifactorial assessment of likelihood of confusion. Additional non-distinctive or descriptive matter added to a mark may not help to take away from the overall similarity, particularly if it is likely to be regarded as being separate from the dominant letter. In the automotive industry where single letters are often used as trade marks by manufacturers, the stylisation of these letters could become critical to a finding of whether marks are similar or not. Based on this case it would appear that stylisation may have to be substantially different to avoid objection from earlier right holders.