Likelihood of confusion of figurative marks

In trademark proceedings, word marks and figurative and word marks are often examined in relation to their likelihood of confusion. In a recent decision before the European Court of Justice, however, it was a question of the likelihood of confusion between figurative marks.

What is the likelihood of confusion between figurative marks showing two similar lion heads for goods in the fashion sector?

The Board of Appeal of the European Trade Mark Office (EUIPO) found that there was an above-average degree of similarity between the two figurative marks with the lion heads. There was a likelihood of confusion between the figurative marks. This decision was challenged before the European Court (CFI).

Figurative marks - examination of similarity

In the comprehensive assessment of the likelihood of confusion, the similarity between the two trademarks is always determined in terms of visual, phonetic and conceptual similarity.

The aspect of phonetic similarity does not play a role for figurative marks. However, two lion heads are of course visually similar, and also conceptually similar. Too similar, the Board of Appeal had decided, and in particular found an above-average degree of similarity in conceptual terms.

The CFI also found a similarity between the two figurative marks. The visually dominant element of both trademarks is the lion's head, explained the CFI. This is shown frontally in both marks, with a flowing mane, open eyes, closed mouth and in shades of grey. The secondary graphic elements are also partially identical, as the lion's heads are both arranged in a circle or on a circular background.

So, was the Board of Appeal right to find that there was a likelihood of confusion between the figurative marks?

Likelihood of confusion between figurative marks

Another relevant factor in the assessment of the likelihood of confusion is the degree of distinctiveness of the earlier trademark.

In short, the better known an earlier trademark is, the more likely it is that there is a likelihood of confusion. According to case law, an earlier mark that is well known or that has a high degree of distinctiveness due to distinctive elements in the trademark is more widely protected than an earlier mark with a low degree of distinctiveness (judgment of 29 March 2023, Machková v EUIPO - Aceites Almenara (ALMARA SOAP), T-436/22, paragraph 96).

So how should the distinctiveness of a lion's head in the fashion industry be assessed?

Lion's head figurative marks - distinctive or everyday decorative?

According to the CFI, the representation of a lion's head is a everyday decorative motif in the fashion industry. The Court referred to the case law (CFI 2008, Limoncello di Capri v Limoncello, T-210/05, paragraph 35; CFI 2013, Olive Line International v OHIM - Carapelli Firenze [Maestro de Oliva], T-4/12, paragraph 34). Moreover, proprietors of a trademark may not, in principle, claim protection that could create a monopoly on a commonly used term (see Opinion of Advocate General Saugmandsgaard Øe in EUIPO v Equivalenza Manufactory, C-328/18 P, EU: C:2019:974, para. 83).

Consumers are used to being confronted with certain types of images or decorative elements in the decoration or presentation of goods, including figurative elements of animals in the fashion industry. Consequently, the earlier trade mark as a whole is only capable to a limited extent of identifying the goods for which it is registered as originating from a particular undertaking and distinguishing those goods from those of other undertakings, the CFI ruled. The earlier of the two lion's head figurative marks therefore had only a low degree of inherent distinctive character and distinctiveness.

However, the Board of Appeal had found that the earlier trademark had average inherent distinctiveness. This was found wrongly, the CFI ruled. Therefore, the likelihood of confusion between the figurative marks had also been wrongly established.

The CFI annulled the contested decision of the Board of Appeal of the EUIPO and ruled that there was no likelihood of confusion between the Lion's head figurative marks (CFI, 20th December 2023, T‑564/22).

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