In Peek & Cloppenburg v OHIM  T-386/07, the Court of First Instance (renamed the General Court when the Treaty of Lisbon entered into force on 1 December 2009) has overturned a decision of the Second Board of Appeal of The Office of Harmonization for the Internal Market (OHIM) that rejected an opposition finding no likelihood of confusion between the stylised mark AGILE and the earlier Community trade mark (CTM), AYGILL’S, registered for the same goods.
Redfil filed a figurative CTM application for the stylised mark for bags, sports clothing and golfing products.
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Peek & Cloppenburg opposed the registration based on its earlier Community and national registrations for AYGILL’S, alleging a likelihood of confusion between the two marks. The Opposition Division upheld the opposition. OHIM’s Second Board of Appeal annulled that decision on the basis that the conditions of Article 8(1)(b) of the Community Trade Mark Regulation (40/94/EC) were not met. Although there was a phonetic similarity between the marks in French, there was no such similarity in English and AYGILL’S had no meaning in any Community language. The Board found no likelihood of confusion because the visual similarity was of a low degree and the phonetic similarity only applied to the French public. Peek & Cloppenburg appealed.
Based on established case law, the Court confirmed that two marks are similar even where there is only a partial similarity between them. The Court considered the visual, phonetic and conceptual similarities between the marks. Since the marks were for sporting goods, the relevant public was deemed to be the average consumer.
Finding at least an average degree of visual similarity between the marks, the Court took account of the length of the words and the fact that consumers generally pay greater attention to the beginnings of words. The use of a different font was irrelevant as Peek & Cloppenburg had the right to use its mark in any typeface. The Court applied the doctrine of imperfect recollection finding that the existence of the letter “y” was insignificant in the determination of similarity, concluding that it would only be relevant if the consumer were afforded the opportunity to compare the marks side by side.
Applying phonetic rules in the English and French languages, the Court upheld the Board of Appeal’s finding that Redfil’s mark might confuse the average French consumer and that it was phonetically similar to the earlier mark. The Court accepted that the average French speaking consumer was likely to associate the use of the apostrophe followed by the letter “s” in the earlier mark with the English language. However, it did not follow that he would be able to pronounce the earlier mark in accordance with the rules of English pronunciation. Therefore, the Board was correct to compare the two marks by applying the rules of French pronunciation.
The Court considered the literal meaning of Redfil’s mark, concluding that in several Community languages agile means “physically or mentally quick”. This differed from Peek & Cloppenburg’s mark which would be understood, even by a French consumer, as a family name or a place name due to the apostrophe. Although the Court acknowledged the conceptual differences between the signs based on the meaning of the words in several languages of the Community, it did not consider those differences sufficient to neutralise the visual and phonetic similarities.
Ultimately, the Court held that the fact that the goods in question were identical offset the low degree of similarity between the signs and, as such, the Board of Appeal was wrong to exclude a likelihood of confusion within the meaning of Article 8(1)(b).
This case serves as a reminder that word marks registered without stylisation gain wide protection covering any form in which their proprietors choose to use them. Although registering a stylised mark can provide distinctiveness to a commonplace word, it will not assist to differentiate the proprietor’s application from an earlier pure word mark.