In Case T 528/11,  Aloe Vera of America, Inc v OHIM, the EU General Court, in dismissing an appeal against a decision of the Board of Appeal of the Office for  Harmonisation in the Internal Market, has found that there is a likelihood of confusion between     figurative    trade    marks    featuring    the    words “FOREVER” and “4 EVER”.

BACKGROUND

The Aloe Vera of America, Inc. filed an application to register a figurative Community trade mark  (CTM) incorporating an image of a bird of prey above the word “FOREVER” within Class 32 for “Aloe  vera juice, fruit juice, aloe vera gel drinks and aloe vera pulp”. Upon publication, an opposition  was filed, based on an earlier Portuguese figurative mark subsequently transferred to Detimos –  Gestão Imobiliária, SA, registered in respect of “juices” and consisting of the words “4 EVER”. The  OHIM Opposition Division upheld the opposition, rejecting the CTM application, and the Board of  Appeal dismissed Aloe Vera’s appeal.

The Board of Appeal held that the goods were in part identical and in part similar. Further, it  held that there was a degree of similarity between the two marks, being phonetically and  conceptually identical for the English speaking part of the relevant public and phonetically  similar and conceptually neutral to the remaining part. Given these considerations, in its global  assessment the Board of Appeal held that there was a likelihood of confusion, sufficient to reject  Aloe Vera’s appeal and thereby denying the CTM application.

DECISION

The General Court assessed Aloe Vera’s plea that the Board of Appeal had erroneously found that  there was a likelihood of confusion between the two marks. The basis of this plea was that the  Board of Appeal had not been justified in taking into account the ways in which the marks would be pronounced by 

English-speaking  consumers,  and  that  it  failed  to  correctly consider the visual and conceptual differences between the marks.

In its comparison of the two marks, the General Court noted that the global assessment of the  likelihood of confusion in relation to the visual, phonetic and conceptual similarities must be  based on the overall impression given, with consideration given to their distinctive and dominant  components.

Visual Comparison

Aloe Vera refuted the Board of Appeal’s claim, arguing that there was no, or merely a low level of,  visual similarity between the marks. It claimed that its figurative sign was individual and   original and that its  distinctive bird of prey incorporated into the sign was as prominent as the  word aspect of the sign, such that the word element “FOREVER” could not be construed as dominant.

Whilst the General Court noted slight visual differences expressed through alternate fonts, styles  and the pictorial bird of prey, such differences were not found to be so significant as to cancel  out the visual similarity. The Court noted that in the case of marks consisting of word and  figurative elements, the word element will generally be considered dominant, figurative elements  being perceived generally as decorative.

Phonetic Comparison

Aloe Vera disputed the fact that the Board of Appeal took into consideration the English-speaking  public as part of its analysis, submitting that where oppositions were based solely on national  marks, the likelihood of confusion was to be assessed only in relation to the linguistic rules of  the target public, namely Portuguese. Aloe Vera argued that Portuguese- speaking consumers would  not pronounce the earlier mark according to English rules of pronunciation, thereby removing any  phonetic similarity as the earlier mark would be pronounced “quatro ever”.

The General Court found that, whilst the relevant public consisted of the territory in which the  earlier mark was registered, the particular knowledge of that public was relevant to its  consideration. In this case, that incorporated the fact that some knowledge of the English language  could be applied to the average Portuguese consumer. Further, such basic knowledge would allow that  part of the relevant public to understand the number 4 when associated with the English word  “ever”, as referring to the English preposition “for”, thereby leading such a consumer to read the  earlier mark “4 EVER” in the same way as the sign “FOREVER”.

Conceptual Comparison

Aloe Vera argued that both the English and non-English speaking public would not view the marks as  conceptually similar, perceiving no connection with the mark “4 EVER”, in addition to the fact that  the figurative bird of prey formed part of the sign’s conceptual meaning. The General Court found  that, to non-English-speaking consumers, the marks were conceptually neutral, but to  English-speaking consumers the 

marks were conceptually identical, based on the same rationale as that which led the Court to find phonetic similarity, and dismissing the contention that the  bird of prey altered the meaning of the word “forever”.

In the context of a global assessment based on the analysis of the above criteria, the General  Court found that there was a likelihood of confusion between the marks and upheld the Board of  Appeal’s decision.

COMMENT

This decision emphasises the decisive role the perception of the average consumer plays in such an  assessment, as the particular characteristics and knowledge of the relevant public played a  significant role in the outcome of this case. It is a key factor in the global assessment that  courts make in determining whether or not there is a likelihood of confusion between two marks.