In 2013, Xianhao Pan successfully obtained a EUTM (No. 11775509) for a figurative mark depicting a cartoon character of a tapir and the verbal element ‘TOBBIA’ for ‘clothing, footwear, headgear’ (Class 25).
In April 2015, the creators of the Peppa Pig animated series (Ashley Baker Davies and Entertainment One UK, as intervener) filed a request for a declaration of invalidity of the TOBBIA mark pursuant to (what is now) Article 8(1)(b) and Article 60(2)(c) of the EU Trade Mark Regulation. In support of its application, the parties relied on the grounds of a likelihood of confusion with an earlier figurative EU mark which was registered for identical goods, and copyright in Peppa Pig images.
EUTM 10186261 ‘PEPPA PIG’
The application was initially rejected by the Cancellation Division due, primarily, to the prominent use of each character’s name as part of the respective signs. In a decision issued in September 2017, however, the Board of Appeal overturned the Cancellation Division’s findings on the basis of visual, aural and conceptual similarities which, in the Board’s opinion, raised a likelihood of confusion between the respective signs.
Pan applied to the Court for annulment of the decision based on four grounds of appeal: (i) the admissibility of the appeal (as being out of time); (ii) the late submission of evidence; (iii) failure on the Board’s part to give reasons for its decision; and (iv) on the basis that the Board had erred in the comparison of the contested mark with the earlier mark and in the global assessment of the likelihood of confusion.
Pan’s first three grounds were given short shrift by the Court, who reinforced that the Board was under no obligation to reproduce all of the arguments of one party, or reply to each of those arguments individually, or risk a finding that it had failed to take them into account. Thus, whilst the Board did not expressly rule on the admissibility of the appeal, this was implicit in the fact that it had dealt with it. Similarly, notwithstanding the EUIPO’s discretion to take into account evidence submitted late to proceedings, it was implicit in the Board’s assessment that weight had not been placed on the additional documents. Finally, the Court emphasized that the purpose of the obligation to state the reasoning behind a decision was, primarily, to enable concerned parties to ascertain the reasons for it, and, secondly, to enable the EU Courts to review its legality. It was sufficient that the Board had stated the reasons on which its own decision was based.
In respect of Pan’s fourth plea, the Court agreed with the Board’s findings concerning aural, visual and conceptual similarities and held that the Board had been entitled to consider that the differences between the signs were outweighed by the similarities. Particularly in relation to the clothing sector, it was correct that weight had been attributed to the visual similarity in the Board’s global assessment of the likelihood of confusion, since the purchase of clothing involves a visual examination of the marks.
At least in the case of distinctive logos, the case serves to illustrate that the figurative elements of a mark can be sufficient to prevent other similar logos being registered, even where there are distinctive word elements that might otherwise be argued to negate against a finding of a likelihood of confusion. This is a welcome decision for rights holders seeking to protect distinctive logos.
This article first appeared on WTR Daily, part of World Trademark Review, in April 2019.