What's a letter got to do with it: Advinans AB v ALBINGIA SA

In a recent judgment (case R 551/2018), the Grand Board of Appeal annulled the decision of the Opposition Division which had refused the stylised “A” mark applied for by Advinans and instead, rejected the trade mark opposition filed by Albingia.

Background

In 2016 the trade mark applicant, Advinans, sought to register the sign below for financial services in Class 36 (the “Advinans Application")

Albingia opposed the Advinans Application on the basis that Albingia holds a similar French trade mark and international trade mark both for similar services in Class 36 (shown below).

Albingia argued that the services covered by the Advinans Application and Albingia’s earlier trade marks were highly similar, if not identical, and the signs were similar, too. Albingia opposed the registration of the Advinans Application since the earlier French trade mark enjoyed protected for a stylised letter ‘A’ so they were visually highly similar.

In their first decision, the EU Opposition Division upheld the opposition and rejected the Advinans Application on the basis that first, the services applied for were identical, and secondly, it found that although visually, the signs were only similar to an average degree, it held that a likelihood of confusion existed between the Advinans Application and the earlier French trade mark.

Grand Board of Appeal decision

Advinans sought the annulment of the Opposition Division decision and criticised the EUIPO Opposition Division for failing to consider the dissimilarities between the signs and services applied for.

The Grand Board of Appeal agreed with the Opposition Division that the services applied for were identical and dismissed Advinans’ arguments that the actual services being offered were different, finding that the description of services which mattered was that on the specification itself. The Grand Board of Appeal took its assessment of the similarity of the services further and stated that even if Advinans were to only offer services that are not reflected in the specification, the overlap in the goods and services on the actual specifications is what is relevant. The comparison between the marks must be limited to the goods and services applied for and the goods and services as registered for the earlier mark.

In its judgment the Board found that the signs were dissimilar overall on account of the following:

• The Board considered that the sign Advinans’ applied for might be perceived as a triangle with its baseline cut off and with a white triangular space between the legs of the triangle and a grey triangle imposed over the right arm of the first triangle, or as an open tent.

• The Board described Albingia’s earlier sign as composed of two thick, coloured parallelograms and that it may be perceived as a triangle with one white triangular space between the legs of the triangle and then another white triangular space imposed over the left leg, or as a house of cards.

• The Board disagreed with the Opposition Division and said that neither sign resembled the capital letter ‘A’ and found that it was more likely the public would recognise the signs only as a combination of some basic figurative elements.
• The Board also drew further distinctions between the visual appearance of the signs which meant that the overall impression created was different, so the signs are dissimilar. These included that the signs were in different colours, the left bars were of different sizes and the mark which was the subject of Advinans Application contained an overlapping triangle.
• Both parties argued that the signs were a stylised representation of the capital letter ‘A’ however, the Board interpreted the signs narrowly and decided that, visually, the signs could not be reduced to a normal, standardised representation of the letter. Instead, the Board found that the scope of each sign’s rights would be tied to the specific visual appearance of the mark.
• The Board considered case law on the issue of the conceptual comparison when the general public were to perceive the signs as a stylised capital letter ‘A’. As with their comparison on visual similarity, the Board interpreted the concepts of the two signs narrowly and found that neither sign could be described using generic terms relating to the letter ‘A’ and would need further clarification, such as ‘a capital letter A in the form of an open tent’ or ‘in the form of a house of cards’, which meant the signs were not conceptually similar.
• The Board found that, although signs perceived as a single letter are capable of conveying the generic concept of the letter, the mere fact that the signs could be described by the same letter is not sufficient to establish conceptual similarity.

In its global assessment, since the Grand Board found the marks were dissimilar, it is not surprising that they went on to find no likelihood of confusion notwithstanding that the services applied for were found to be identical.

COMMENT

This decision looks in depth at the existing case law on visual and conceptual comparison and in particular when the signs are for a stylised single letter, the scope of protection afforded to such registrations is very narrow.

In addition, as seen in the above judgment of the Grand Board of Appeal, when comparing the goods and services of a pending application to those of an earlier right, the relevant test is the entire specification protected by the earlier trade marks, and it is irrelevant that the earlier mark is only used for a narrow list of goods and services.

Co-authored by Beth Wilson, Trainee Solicitor