Car clash
Absent a finding of similarity, consumers cannot make an association between two marks, writes Désirée Fields. T-623/16, Volkswagen v EUIPO and Paalupaikka (MAIN AUTO WHEELS), General Court, 19th September 2018.
T-623/16, Volkswagen v EUIPO and Paalupaikka (MAIN AUTO WHEELS), General Court, 19th September 2018
Key points
- The similarity between two marks must be based on a global assessment of the visual, phonetic and conceptual similarities between them, and without regard to use in actual commerce
- Word elements are usually considered more distinctive than figurative elements, since consumers tend to refer to a product by name
- Absent a finding of similarity between two marks, consumers cannot make an association between two marks for the purposes of Article 8(5)
In May 2014, Paalupaikka filed a figurative EU trade mark (EUTM) application in classes 12 and 35, including for vehicles and advertising services in classes 12 and 35. Volkswagen opposed under Articles 8(1)(b) and 8(5) of Regulation (EC) No 207/2009 (now Regulation (EU) 2017/1001). Volkswagen relied on two earlier EUTMs, registered for identical and similar goods and services in classes 12 and 35.
EUIPO’s Opposition Division rejected the opposition, holding that the respective marks produced a different overall impression and that Volkswagen had not shown that the mark applied for would take unfair advantage of or be detrimental to the distinctive character of its earlier marks. EUIPO’s Fourth Board of Appeal (BoA) dismissed Volkswagen’s appeal. Volkswagen appealed to the General Court (GC).
Shades of difference
Volkswagen argued that the BoA had wrongly attributed importance to the word elements MAIN AUTO WHEELS, which Volkswagen submitted were a footnote or slogan, lacked distinctive character and occupied a subsidiary position in the mark applied for. Dismissing those arguments, the GC confirmed the BoA’s finding that the words were not negligible and would catch the attention of consumers, due to the capital letters, simple font and contrasting colour.
The GC found that the word sequence – main, auto, wheels – was unusual and not descriptive of the goods and services applied for. It enabled consumers to more easily discern the letters “M” and “A” in the circle above. Accordingly, the figurative element was not the only decisive factor in assessing the overall visual impression produced by the marks.
The GC agreed that the figurative elements were visually different and dismissed Volkswagen’s other arguments, in particular that the BoA should have taken actual use into account, noting that the confusion had to be assessed solely on the basis of a comparison of the marks.
The GC agreed that phonetic comparison was only possible if the relevant public perceived the letters “v” and “w” in the earlier marks. Here, it was appropriate to compare MAIN AUTO WHEELS with “vw” or “wv”. Conceptually, the GC agreed that the word AUTO within the mark applied for was internationally understood as “car”, and that the English-speaking public would understand the meaning of WHEELS and MAIN. The GC found that Volkswagen’s marks did not convey any conceptual meaning. Concluding that the marks were overall dissimilar, the GC dismissed Volkswagen’s appeal under Article 8(1)(b).
No association
The GC noted that, for Article 8(5) to apply, three cumulative conditions had to be fulfilled. The first was that the marks concerned had to be identical or similar. The others related to reputation and the risk that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. For the relevant public to be able to establish a link between the respective marks, there had to be a certain degree of similarity between them. Given that the marks were held to be dissimilar, Volkswagen’s case under Article 8(5) fell at the first hurdle.
Affinity needs must
A finding of similarity between two marks is crucial in order for a case under Article 8(5) to bite. Absent such a finding, consumers cannot make an association between them. In that regard, the analysis must be carried out solely by comparing the contested mark as applied for and the earlier mark as registered, without regard to actual use in commerce.
Désirée Fields is a Legal Director at DLA Piper UK LLP
Her practice focuses on trade marks and brand protection.