A shining example of overall impression assessment
In 2014, the applicant, Claro Sol Cleaning, SLU applied in the EU for a figurative mark above left.
The application was in Classes 35, 37 and 39 covered an extensive list of services. The opponent, Solemo Oy, filed a notice of opposition based on the earlier Finnish figurative mark above right registered for services in the same three classes:
At first instance, the Opposition Division compared the services in question, deciding that they shared a varying degree of similarity, including some being identical and a minor part (predominantly sales, advertising and other commercial activities in respect of cleaning products and chemicals in class 35) being dissimilar. At no point in the proceedings have these findings been contested.
The Opposition Division also found a low degree of visual similarity, a low degree of phonetic similarity for the section of the public which recognised the letter “o” in the earlier mark but no phonetic similarity to those who did not; and no conceptual similarity (as the word “sol” did not convey any concept in Finnish). No evidence of reputation was provided. The public were held to have an average to high level of attention.
The First Board of Appeal partially annulled the decision. The Board found that the word elements “desde 1972” and “Facility Services” would be considered as either descriptive (for those who understood their meaning) or secondary (due to smaller font and their ancillary position), leading to a conclusuion that “claro” and “sol” are the dominant elements. The Board considered that the marks are visually similar, share an average degree of phonetic similarity and that for the Spanish-speaking section of the Finnish public they are conceptually similar, whilst no such similarity exists for those who do not speak Spanish.
The Applicant appealed the decision to the General Court (“GC”).
The GC found that the words “claro” and “sol” stand out in the Applicant’s mark due to their central location and red font, with “Claro” being slightly dominant as the first word. The element “desde 1972”, despite not being understood by the Finnish public, was considered not negligible in the overall impression. The composite figurative element (a wind-filled sail with a music-note like mast) was held to be “clearly perceived and memorised by the relevant public” due to its size, originality and colours. Its striking features meant that word elements were found not to be dominant.
The GC stated that because no elements could be regarded as dominant or negligible, the assessment shall be based on the overall impression created by the mark. Here the presence of word ‘sol’ was offset by: (i) the element ‘claro’; (ii) different typographic characters in the marks and in the word ‘sol’ itself; (iii) other non-negligible word elements; and (iv) striking figurative elements. Taking into account the overall impression, the marks were held to be visually different.
In respect of phonetic assessment, the overall degree of similarity was held to be average. Some similarity exists because “Sol” is the only word element of the earlier mark and it is identical to one the elements in the mark applied for. However, very audible pronunciation of ‘claro’ and presence of the non-negligible element ‘desde 1972’ which might be pronounced by the Finnish public (as opposed to the “Facility Services” which would not be pronouced because the meaning is known) offset this similarity.
Assessing the conceptual similarity, the GC found that both marks coincide in the meaning of “sol” - namely sun in Swedish (Swedish being one of the official languages in Finland). Despite this, similarity was not high due to other word elements and the representation of a musical note in the mark applied for.
Having conducted the overall assessment, GC held that the relevant public would distinguish between the signs, there was no likelihood of confusion and that the decision of the Board of Appeal should be annulled.
Case Ref: T-159/17