Background

In February 2013, Yusuf Pempfe filed an EU trade mark application for the logo mark (above left) in Classes 9, 16, 18 and 25. The application was opposed by Marshall Amplication plc, on the basis of their earlier EU trade mark (above right) in Classes 16, 18 and 25, a word mark “MARSHALL” in Classes 9 and 11 and a UK logo mark (similar to the above, but inverse colours) in Class 9.

The Opposition Division upheld the opposition in part in respect of certain goods in Classes 9, 16, 18 and 25. Pempfe filed a notice of appeal but this was dismissed. It found that the marks at issue were visually, phonetically and conceptually similar.

The General Court

On appeal, the General Court first dealt with the issue regarding the applicant’s request for proof of genuine use. The applicant argued that the Opposition Division and the Board of Appeal were wrong to find that his request for proof of genuine use in respect of some of the opponent’s earlier marks was inadmissible. He argued that the five-year period of the UK mark, after which he was entitled to request proof of genuine use, had elapsed between the registration of the mark and the Opposition Division’s and the Board of Appeal’s decision. However, the Court held that the fact that the five-year period had come to an end during the course of proceedings was irrelevant given that the period had not yet come to a close when the applicant’s mark had been published.

Overall perception of the marks

The applicant argued that the Board of Appeal had incorrectly reduced the perception of the marks to their common element, the word ‘Marshall’, and neglected the distinctive nature of the word ‘Thomas’ and ‘garments of legends’. The applicant argued that because Marshall is a very common name in the UK, it had weak distinctive character.

However, the Court found that because ‘garments of legends’ is smaller sized and merely ‘promotional fluff’ the consumer would place less reliance upon it. Moreover, the seal in the top right corner would be seen as purely decorative. Lastly, the Court dismissed the evidence that showed there were 97,225 people in the UK with the surname Marshall, concluding that this could not prove that the name will be perceived as common. Consequently, the Court found the dominant words were ‘Marshall’ in the earlier mark and ‘Thomas’ and ‘Marshall’ in the marks applied for, with the other elements being of secondary nature.

Visual comparison

The Court agreed with the Board of Appeal’s finding that the signs had an average degree of similarity. It concluded that even though the marks were represented by different characters, i.e. upper and lower cases letters and italics, this does not lead to the conclusion that they will be perceived as different by the relevant public. In addition, even though the words ‘Thomas’ and ‘Marshall’ were co-dominant in the mark applied for, this in itself is not capable of counteracting a finding of average similarity between the marks.

Phonetic comparison

The Court upheld the Board of Appeal’s decision that the signs were phonetically similar. In doing so, the Court dismissed the arguments of the applicant in suggesting that the signs differ because of the additional five syllables in ‘garments of legends’. The Court held that because this should be considered promotional fluff, the consumer would not pronounce this part. In addition, the applicant failed fully to explain why the consumer would simply pronounce ‘Thomas’ rather than ‘Thomas Marshall’, given that these two words were correctly found to be dominant.

Conceptual comparison

The Court agreed that the signs were conceptually similar. Its reasoning centred on the fact that the relevant public will perceive the words in the mark applied for as a first name and a surname. Therefore, the public will perceive the word ‘Marshall’ in both signs as referring to the same surname. The mere addition of a first name cannot create a conceptual difference between the marks. In addition, the Court dismissed the applicant’s arguments that there was a conceptual difference between the signs because the mark applied for refers to a “very well-known person” because there was a lack of evidence proving such an assertion.

Likelihood of confusion

Finally, the court conducted a global assessment of the likelihood of confusion between the marks. In this regard, the Court reiterated that even though ‘Marshall’ may be a common name in the UK, it was incorrect to state that this weakens its distinctiveness. In addition, the evidence stating that ‘Marshall’ is contained in 58 EU trade marks and 500 WIPO registrations does not prove actual presence on the market. Moreover, the Court rejected the applicant’s argument that the marks had co-existed. In this regard, the applicant had not duly demonstrated that such co-existence was based upon the absence of any likelihood of confusion on the part of the relevant public between the marks. As a result, the Court upheld the finding that there was a likelihood of confusion between the marks.

Conclusion

This decision highlights that even in the face of evidence suggesting that a name included in a mark is relatively common, this may not be enough to be enough to persuade the Court that it lacks distinctive character.

Case Ref: T-271/16