Narrowing the scope of protection of figurative marks?

Both the EUIPO and General Court have had a tendency to grant a broad scope of protection for purely figurative marks. Below are several examples:

Earlier mark	Contested mark	Decision
		Low degree of visual and average degree of conceptual similarity (T-364/13)
		Average degree of visual similarity and high degree of conceptual similarity (T-21/15)
		Average degree of visual and low to average degree of conceptual similarity (R863/2020-2)
		Conceptual identity and average degree of visual similarity (T-417/21)

Just like marks containing descriptive elements (see here), however, the times might have changed, as the recent judgment in case T-491/22 suggests:

Background

The company e-gaming s.r.o filed an EU trade mark application for the following figurative mark:
 

 

The application covered goods and services in classes 9, 38 and 41, primarily for gaming and gambling.

Zitro International Sàrl filed an opposition against this application inter alia based on its EU trade mark no. 9614868 for the following sign in classes 9, 28 and 35, also concerning gaming and gambling.

 
The Opposition Division of EUIPO and the Board of Appeal both held that there is no likelihood of confusion because the signs are dissimilar.

The General Court’s judgment

Agreeing with the Board of Appeal, the General Court dismissed the opponent’s appeal.

Visually, the General Court accepted that the signs share certain features. Besides the identical colour scheme (white, grey, and black), the signs have in common “a central element which includes, inter alia, an open smiling mouth showing teeth, large eyes, a top hat, two arms wearing gloves and two legs wearing shoes”. However, the way in which those features are represented in each mark was found to be sufficiently different to produce an overall different visual impression on the average consumer:
 

They are two fantasy figures stylised differently, that is, on the one hand, a happy figure in the shape of a ball with wide-open eyes, straight arms and short legs and, on the other hand, a figure in the shape of a one-eyed, slightly deformed face with one bent arm and another arm resting on a cane, and legs of the same length as the central element.

Aurally, the General Court reminded us that a phonetic comparison of purely figurative marks (i.e., without word elements) is, in principle, not possible. Only their visual or conceptual content can be described. However, the visual and conceptual aspects are assessed separately and are not taken into account in the phonetic comparison.

EU courts make an exception, however, where the semantic content of a purely figurative mark can immediately be associated with a specific, concrete word. The General Court held that no specific word can be attributed to the abstract fantasy figures. The only elements that might be pronounced are the letters ‘B’ and ‘S’ on the hats of the respective figures. ‘B’ and ‘S’ are obviously different.

Conceptually, signs are similar when they convey the same idea or concept. The judges opined that the abstract fantasy figures do not convey a clear meaning. The mere fact that they are ‘fantasy figures’ was not deemed sufficient.

Since the marks were found not to be similar, there cannot be a likelihood of confusion.

Comment

In assessing the similarity of figurative signs, it is helpful to remember that trade mark law does not grant a monopoly to a concept or idea but only to a specific expression of a concept or idea in a specific sign (cf. T-711/20 at para. 53). Therefore, the opponent in the case discussed above cannot claim rights to all fantasy figures consisting of a head with arms and legs wearing a hat, but only to the specific representation as registered.

Nevertheless, based on previous case law as referred to above, it would not have been unreasonable to hold that the signs are visually and conceptually similar at least to a low degree.

Visually, a direct comparison shows obvious differences but the average consumer rarely has the opportunity to make a direct comparison between the signs and must place his trust in the imperfect image of the signs that he has kept in his memory (e.g. T-21/15 at para. 67). The General Court did not mention this principle in the reasoning of the judgment discussed above.

Rejecting any conceptual similarity also points to a stricter approach than suggested by previous case law. The fact that both signs show a fantasy figure is, of course, too broad of a concept to allow a finding of even a low degree of conceptual similarity. However, both signs show a fantasy figure consisting of a head with slim arms, legs and a hat. Why should that not be sufficient for consumers to associate a concept of a specific (yet unnamed) fantasy creature?

Sceptical? Consider that the General Court found in case T-151/17 that the following signs have at least a low degree of conceptual similarity because they both evoke the concept of an imaginary creature combining the characteristics of several animals.

 

Accepting a low degree of visual and conceptual similarity does not necessarily lead to a finding of a likelihood of confusion. The interdependence principle is not applied mechanically. Even where the goods and services are identical and the signs are weakly similar, a likelihood of confusion can be denied (see e.g. T-175/22 at para. 89). This approach can provide the flexibility needed to adjudicate each case on its particular merits.