BMW successfully opposed, before the General Court, registration of the MINICARGO trade mark for "apparatus for locomotion by land, namely trailers", relying on its earlier Community Trade Mark for MINI.
The decision of the General Court, dated 10 March 2016, is available here.
On 19 October 2012, LG Developpement (LG), a French company, applied for registration of the following figurative mark for 'apparatus for locomotion by land, namely trailers' (Class 12) as a Community Trade Mark (CTM):
Bayerische Motoren Werke AG (BMW) opposed registration of the mark based on its earlier CTM for the word mark MINI for 'land vehicles; parts components and accessories for all the aforesaid goods' (also Class 12).
BMW relied on Article 8(1)(b) of Regulation No 207/2009, whereby the proprietor of an earlier mark can prevent registration of a mark applied for where there is a likelihood of confusion on the part of the public in the territory in which an earlier mark is protected, due to its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the marks.
BMW's opposition was rejected at first instance, but its appeal to the Board of Appeal of the Office for Harmonisation of the Internal Market (OHIM) was successful. LG appealed to the General Court, arguing that the definition of the relevant public applied by the Board of Appeal was incorrect, that the goods covered by the marks at issue were not identical, and that there were sufficient differences between the marks to rule out any likelihood of confusion.
The relevant public
The General Court considered it would be inappropriate to restrict the relevant public solely to the French public because the absence of a likelihood of confusion in France did not rule out the possibility of a likelihood of confusion in another part of the European Union. The General Court noted that the mark applied for is a Community trade mark and therefore the relevant territory is the European Union as a whole.
However, it was sufficient that a likelihood of confusion existed in part of the European Union and the Board of Appeal was therefore entitled to restrict its assessment of the likelihood of confusion to the United Kingdom public for reasons of procedural economy.
The General Court upheld the Board of Appeal's finding that the goods of LG and BMW covered by the marks at issue were identical as the trailers covered by LG's mark were part of the broader category of "land vehicles" covered by BMW's earlier mark.
LG's argument that the goods covered by the respective marks were not identical because its goods were targeted at those seeking to save money and were sold through a distribution network catering to professionals, whereas BMW's were aimed at the luxury goods market, was rejected. The category of goods covered by BMW's mark was not limited to a particular market or method of marketing.
The General Court confirmed that there was an average degree of visual similarity between the marks. The word element 'mini' was common to both marks, and 'cargo', meaning 'load' in English, was merely descriptive of the goods and devoid of distinctive character. Neither the position of 'cargo' in the mark, nor the size of the word, made it the dominant element of the mark.
The figurative elements of LG's mark did not dispel the impression of visual similarity, the red rectangle and white letters were not novel and the sparkle above the letter 'n' would either go unnoticed, or draw the attention of consumers to the word 'mini', the word common to both marks.
The General Court also confirmed there was an average degree of phonetic similarity between the marks on account of the relevant English-speaking public's identical pronunciation of the two syllables which the signs have in common, 'min' and 'ni'.
The General Court considered that the Board of Appeal had erred regarding the conceptual similarity of the marks and it regarded the signs as conceptually similar to a low degree. The word 'mini' only characterised the size of the object designated, whereas 'cargo', meaning 'load', determined the meaning of the mark.
However, the Board of Appeal's error was not capable of affecting the finding of an average degree of similarity between the marks taken as a whole.
As the goods at issue were identical, there was an average degree of similarity between the marks taken as a whole and LG did not dispute the enhanced distinctiveness of BMW's mark on account of the recognition of that mark by the public in the United Kingdom, the General Court concluded there was a likelihood of confusion between LG's proposed mark and BMW's mark.
LG's argument that the MINI in the MINICARGO mark would be understood as the opposite of MAXI in its French trade mark MAXICARGO was rejected, as this could not affect the finding of a likelihood of confusion between the MINI and MINICARGO marks at issue.
The General Court also confirmed that decisions of the Court of Appeal in Paris relied on by LG were not binding on the Board of Appeal and, in any event, related solely to the perception of French consumers of the marks at issue. This was not relevant in the context of the assessment of the likelihood of confusion as regards the relevant public in the European Union, which included consideration of the relevant public in the United Kingdom.
LG's downfall in this case was its reliance on the perception of French consumers and French authorities, which the General Court had little trouble in dismissing as irrelevant when there was a likelihood of confusion between the marks in a part of the European Union, in this case, the United Kingdom.
When dealing with a CTM application, take care to look at the European Union as a whole. Grounds for refusal of registration, or for revocation, should be considered from the perspective of the relevant public in the most challenging part of the EU for the mark in question.