For Athlon, it figures

22nd Apr 2021

Amelia Skelding describes a decision in which a figurative element was a deciding factor. T‑349/19, Decathlon v EUIPO, General Court, 15th October 2020.

In Decathlon v EUIPO, French sports products retailer Decathlon lost its appeal against the General Court’s judgment that there was “no likelihood of confusion” between its earlier EU trade mark (EUTM) registration for DECATHLON and the figurative ATHLON mark applied for by Athlon Custom Sportswear.

Initial timeline

On 14th December 2016, Athlon filed an EUTM application for its figurative mark. It covered “clothing; hats” in class 25 and “sporting articles and equipment” in class 28. The application was published on 18th January 2017.

On 14th April 2017, Decathlon filed a notice of opposition based on its earlier EU word mark for DECATHLON registered in 2004 and covering “clothing; caps” in class 25 and “gymnastic and sporting articles” in class 28. The ground relied on in support of the opposition was Article 8(1)(b) EUTMR. This states that the trade mark applied for shall not be registered “if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected”.

On 6th July 2018, the Opposition Division (OD) upheld the opposition for all the goods on the ground that there was a likelihood of confusion. On 3rd September 2018, Athlon filed a notice of appeal against the decision of the OD.

On 5th November 2018, Athlon withdrew its application in respect of all the goods in class 28 and amended the goods in class 25 to “athletic clothes and hats”.

Appeal

The Second Board of Appeal (BoA) annulled the decision of the OD on 27th March 2019 and rejected the opposition in its entirety, holding that there was no likelihood of confusion between the marks at issue. The BoA considered the goods at issue to be identical, even after the limitation request by Athlon. However, it took the view that the signs had a very low degree of visual similarity, an average degree of phonetic similarity and – for the part of the public that would understand the verbal elements of the signs – a certain conceptual similarity.

Due to the signs’ low degree of visual similarity and the absence of objective and solid evidence showing an enhanced distinctive character for the earlier mark, there was found to be, in spite of the identity of the goods at issue, no likelihood of confusion between the marks for the relevant public throughout the EU, whether they understood the meaning of the words “decathlon” and “athlon” or not.

Sign comparison

The BoA found that the earlier mark was a word mark that would be perceived by the relevant public as consisting of one indivisible unit. It considered that, in the overall impression created by the mark applied for, more weight had to be attributed from a visual standpoint to the figurative element and the stylised word element “athlon”.

The BoA also considered that the word element “athlon”, which was common to the marks at issue, did not have a clear meaning for the majority of the relevant public and had a normal level of distinctiveness. It took the view that the other elements of the mark applied for were of limited relevance, if any.

The Applicant disputed the BoA’s findings, arguing that it was wrong to attach more weight to the figurative elements of the mark than to the word element “athlon”. According to the Applicant, the word element dominated the mark applied for and the figurative elements were negligible. The Applicant also submitted that the word element “athlon” constituted the only distinctive element of the mark applied for, and therefore, the marks at issue were visually similar to a high degree.

Confusion

In the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight. In the present case, the Court said that the visual aspects of the signs dominated for two reasons.

First, where two marks have a weakly distinctive component in common, the impact of those elements on the global assessment of the likelihood of confusion is itself low. In this case, it was found that the word element “athlon”, which was common to the signs at issue, was weakly distinctive and so would not be perceived as an indication of commercial origin.

Consequently, the visual differences between the marks, which arise primarily from the stylisation of the common word element and of the figurative element in the mark applied for, dominate in the overall impression on the relevant public created by the signs. These differences counteracted the phonetic similarity and, for part of the public, the conceptual similarity resulting from the common word element “athlon” and the concept to which it refers.

Second, the marketing circumstances are a relevant factor in the global assessment. In the present case, the goods at issue, namely athletic clothes and hats, are in a sector in which visual perception of the marks will generally take place prior to purchase. Consequently, the visual aspect is of greater importance in the global assessment of the likelihood of confusion.

Consequently, in the light of the weak distinctive character of the element “athlon”, the dominance of the visual similarity and the circumstances under which the goods in question were marketed, it was found that there was no likelihood of confusion. Therefore, the action was dismissed in its entirety.

The fact that the word “athlon” was weakly distinctive and did not have a clear meaning to a majority of the relevant public played an important role in deciding this case. Accordingly, the Court attached significant weight to the visual impression of the mark applied for, meaning that the figurative elements tilted the assessment of likelihood of confusion – and thus the outcome of the case – in favour of Athlon Custom Sportswear.

Key points

Do not underestimate the impact of figurative elements when comparing signs with a highly similar word element
Where two marks have a weakly distinctive component in common, their impact on the assessment of likelihood of confusion will also be low

Amelia Skelding is a Chartered Trade Mark Attorney and Trade Mark Associate at Keltie LLP

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