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”.
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.
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.
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.
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”.
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.
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.