Ripe for rejection
It took only one ground to uphold this opposition, writes Emilia Petrossian. B 3 151 255, Maimango v MANGO, EUIPO, 16th August 2022.
Key points
- The established practice of “consumers paying more attention to the beginning of the mark” is not always relevant, particularly if the entirety of the earlier mark(s) is included in the opposed mark
- If a likelihood of confusion or association is established in only part of the relevant public, this may be considered sufficient for the whole of the EU and the mark may still be rejected
- The Opposition Division will choose to limit its assessment of an opposition on the basis of procedural economy if one ground is sufficient
Consolidated Artists B.V. (the Opponent) successfully brought opposition proceedings against Meilian Cui (the Applicant) and its EU trade
mark (EUTM) application No. 018469756 for Maimango (the Opposed Mark) in class 25 on the basis of Article 8(1)(b) of Regulation (EU) 2017/1001 (EUTMR) (likelihood of confusion) and Article 8(5) EUTMR (reputation) in respect of its earlier trade marks for MANGO in various forms.
Although the opposition was based on more than one earlier mark, the Opposition Division (OD) examined the opposition only on the basis of EUTM registration No. 003360815 (the Earlier Mark) for the sake of procedural economy.
Furthermore, as the likelihood of confusion ground was successful, the reputation ground was not assessed.
The OD held that the average consumer was a consumer with “the average degree of attention, who is likely to vary according to the category of goods or services in question”. It also decided that the relevant territory was the EU.
When comparing the class 25 goods of the Opposed Mark with the goods of the Earlier Mark in class 25, the OD found them to be identical. Where the goods were specified, for example “cycling caps”, they were held to be included in the broader category of the goods of the Earlier Mark, for example “headgear”.
Similarity assessment
When assessing the conceptual similarities of the marks, the OD held that the Earlier Mark is to be understood by the public as a tropical fruit that is eaten ripe or used green for pickles or chutney.
Although the Opposed Mark as a whole will be perceived as one verbal element, because the two terms together have no obvious meaning, the relevant public will perceive the meaning of these words as a separate concept and break the mark down into elements that will suggest a concrete meaning.
Specifically, the public will perceive the terms to be “MAI” and “MANGO”, both of which have a meaning. “MAI” means “never” in Italian and “MANGO” has the same meaning as that of the Earlier Mark – fruit.
Based on the above assessment, the OD held that the signs were conceptually similar to an average degree.
Further, the OD held that: “As a semantic similarity tends to increase the risk of confusion, the Opposition Division shall focus on the substantial part of the relevant public in Italy which will perceive the word ‘MANGO’ also in the contested sign.”
Therefore, the likelihood of confusion was assessed in respect of the relevant public in Italy, which was considered sufficient for the whole of the EU.
When considering visual and aural similarity, the signs were held to be similar to an average degree. This was because the signs coincide in the sole distinctive component of the Earlier Mark, “MANGO”.
Further, although the Earlier Mark differed in stylisation, that stylisation was held not to divert consumer attention from the verbal element of the mark.
Distinctiveness
The OD held that the Earlier Mark was distinctive per se and decided not to proceed with an assessment of the evidence filed by the Opponent in support of that distinctiveness for the sake of procedural economy.
Global assessment
As discussed above, the class 25 goods were considered to be identical. Further, the marks were held to be visually, aurally and conceptually similar to an average degree, sharing a common and distinctive element, namely “MANGO”. In this regard, the OD stated:
“Although there is an established practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).”
In addition:
“The fact that the contested sign contains the additional element, such as in the case at hand, the term ‘MAI’ does not outweigh the similarities resulting from the coinciding distinctive term ‘MANGO’.
The typeface of the earlier mark is not such as to obscure the appearance of the fully distinctive term ‘MANGO’ or otherwise detract the public’s attention from it.”
Therefore, although the Opposed Mark contained an additional element, it was not sufficient to exclude a likelihood of confusion between the marks.
When the OD assessed the similarity between the marks and the goods, it came to conclusion that the public was likely to be confused and would consider the Opposed Mark to be a sub‑brand of the Earlier Mark.
Therefore, the opposition was successful and the Opposed Mark refused registration in its entirety.
Emilia Petrossian is a Chartered Trade Mark Attorney at Wedlake Bell LLP
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