General Court, Decisions of 14 September 2011, T-485/07; 22 September 2011, T-99/10; and 10 November 2011, T-313/10
In three recent judgments, the General Court upheld oppositions based on a likelihood of confusion arising from the opposing marks containing the same descriptive terms as the opposed Community trademark applications. In all cases, the Luxembourg court overruled the Office for Harmonization in the Internal Market (OHIM)'s Boards of Appeal, which had denied any likelihood of confusion. The court's approach gives rise to concern as it effectively grants monopolies to descriptive terms in the EU.
The first of the judgments, rendered by the Court's Sixth Chamber on 14 September 2011, concerned an opposition based on the earlier Spanish "trade name" registered for "business activities of a trade intermediary"
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and was directed against a Community trademark application for the mark shown below relating to a range of foodstuffs, fresh produce and beverages.
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OHIM's Board of Appeal held that the word "Olive" was descriptive for anything to do with olives and related products (including in Spain where it would be immediately understood) and could not give rise to any likelihood of confusion. The General Court, however, disagreed, holding that the weak distinctive character of the earlier sign "cannot play a decisive role" in the assessment of likelihood of confusion (para. 106).
Only a few days later, on 20 September 2011, the General Court's Second Chamber issued a similar ruling concerning an opposition based on German and Community trademark registrations "Curry King" against the Community trademark application "TOFUKING", both relating to foodstuffs in class 29. Again, the Board of Appeal held that the weak distinctive character of the sole common element "KING" meant that these two signs were not to be confused, but was told off by the General Court, who found that this consideration should not have been decisive.
Finally, the General Court's Fifth Chamber ruled on 10 November 2011 that the Community trademark application for "AYUURI NATURAL", relating to personal and health care products, had to be refused because of an opposition based on earlier word and figurative Community trademarks "AYUR" covering essentially the same goods. The Board denied a likelihood of confusion, holding that the term AYUR would be associated by the relevant European public with "ayurveda" or "ayurvedic". While, in this case, the General Court even disagreed with this finding, it also emphasized that, "even if the distinctive character of the earlier marks were considered weak for all of the relevant public, the similarities […] would justify the conclusion that there exists a likelihood of confusion" (para. 65).
These three judgments, while not being entirely isolated in the case law from Luxembourg, seem to indicate a trend towards greater protection of descriptive or (largely) non-distinctive elements in trade marks. They were rendered by three different Chambers and a total of nine different judges. If this trend is solidified, clearance of marks in the EU becomes even harder than it already is. All too often, marks essentially consisting of a descriptive term are registered on account of an (often itself only weakly distinctive) additional device or word element. If the court's judgments are to be taken seriously, in such cases it will be very difficult to give a green light to a business wanting to use the same descriptive term.
The "Curry King" decision has been appealed to the Court of Justice of the European Union. A decision from that court is not to be expected before late 2013. Meanwhile, it is to be hoped that OHIM will maintain its general stance (with exceptions confirming the rule) whereby, in principle, trademarks should get the protection they deserve, not more (nor less).