L’appello del 9 circuito n. 23-16060 del 22.10.2024, Lerner&Rowe v. Brown Engstrand&Shely decide una lite per violazione di marchio tra due studi legali avvenuta tramite keyword advertising (k.a.).
Il Panel non affronta le legittimità di quest’ultimo strumento secondo la legge marchi, limitandosi a dire che non ricorre confondibilità tra gli esiti della ricerca Google e il nome/i segno dello studio attore.
Rigetta quindi la domanda.
E’ infatti assai fiducioso sull’avvedutezza dell’utente medio di internet:
<<Google’s search engine is so ubiquitous that we can be confident that the reasonably prudent online shopper is familiar with its layout and function, knows that it orders results based on relevance to the search term, and understands that it produces sponsored links along with organic search results. Moreover, in this case, the relevant consumers specifically typed in “Lerner & Rowe” as a search term, suggesting that they would be even more discerning of the results they received. Therefore, because this case involves shopping on Google by using the precise trademark at issue, this factor weighs in favor of ALG.>>
E poi:
<The district court was correct to conclude that this is one of the rare trademark infringement cases susceptible to summary judgment. The generally sophisticated nature of online shoppers, the evidence demonstrating that there is not an appreciable number of consumers who would find ALG’s use of the mark confusing, and the clarity of Google’s search results pages, convince us that ALG’s use of the “Lerner & Rowe” mark is not likely to cause consumer confusion.>>.
Del che c’è da dubitare, come avverte Eric Goldman (dal cui blog prendo notizia della e link alla sentenza)
L’opinione concorrente di J. Desai invece esamina se il k.a. costituisca “uso del marchio”. Ricorda un importante precedente del 2011 del 9 ciruito, che rispose in senso affermativo: ma ora intende rovesciarlo, perchè non esatto.
<<Whether an action, like bidding
on keywords, that involves no display or presentation of a
mark whatsoever satisfies the “use in commerce” definition.
In other words, does a buyer of advertising keywords who
bids on certain terms and phrases “use” its competitor’s
mark when bidding on it?
In Network Automation, we answered, yes. 638 F.3d at
1144–45. But we provided no analysis to support this
holding, id. at 1145, and we relied on cases with
meaningfully different facts. >>
<<62 In the present case, the Board of Appeal concluded, in paragraph 100 of the contested decision, that, in view of the clear differences between the rights at issue, a likelihood of confusion could be safely ruled out, despite the identity and similarity of the goods and services in question and the enhanced distinctiveness acquired through use of the earlier rights for the services in respect of the organisation of cycling competitions in Class 41.
63 The applicant disputes that assessment, submitting that, in the light of the fact that the earlier rights enjoy enhanced distinctiveness acquired through use or even an exceptional reputation, that the rights at issue are similar on account of the identity of the first part ‘tour de’, and that the goods and services in question are identical or very similar, the relevant public may believe that those goods and services come from the same undertaking or, at the very least, from economically linked undertakings.
64 EUIPO and the intervener dispute the applicant’s arguments.
65 In that regard, it must be held that, in the context of a global assessment of the likelihood of confusion, as a result of the low degree of distinctiveness of the only common element ‘tour de’, and of the low degree of similarity between the rights [tra i concetti evocati, semmai, giammai tra diritti] at issue, the relevant public will not confuse those rights, despite the identity or similarity of the goods and services in question and the enhanced distinctiveness acquired through use of the earlier rights for the services in respect of the organisation of cycling competitions in Class 41. In that context, the error of assessment made by the Board of Appeal in that it found that there was no conceptual similarity between the rights at issue, which is apparent from paragraph 50 above, has no bearing on the outcome of the global assessment of the likelihood of confusion.
66 In the light of the foregoing, it must be held that the Board of Appeal did not err in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009>>.
L’ufficio esclusde la confondibilità ordinaria, soprattuto per l’assenza di vicinanza concettuale: << A livello concettuale, i segni sono dissimili poiché saanno associati a significati diversi veicolati dagli uccellini e dalla farfalla rispettivamente. Di fatto, la semplice appartenenza alla specie animale non è in alcun modo sufficiente a evocare una similitudine concettuale. Infatti, per giurisprudenza ormai consolidata, il mero fatto che due simboli possano essere raggruppati sotto un termine generico comune non li rende in alcun modo simili dal punto di vista concettuale. Ad esempio, il Tribunale ha ritenuto che, sebbene una mela e una pera possano avere caratteristiche comuni, trattandosi in entrambi i casi di frutti strettamente correlati tra loro in termini biologici e simili in quanto a dimensioni, colore, consistenza, tali caratteristiche comuni incidono in maniera davvero limitata sull’impressione complessiva. Di conseguenza, il Tribunale ha concluso che tali elementi sono insufficienti a controbilanciare le evidenti differenze concettuali esistenti tra i marchi, constatazione questa che li ha resi concettualmente dissimili (31/01/2019, T-215/17, PEAR (fig.) / APPLE BITE (fig.) et al., EU:T:2019:45, § 77-79)>>.
Giudizio dubbio: i) intanto si tratta non solo di animali ma di animali che volano; ii) poi la dimensione probabilmente ridotta rende difficile cogliere subito la differenza , o almeno di coglierla in maniera tale da far pensare a due aziende in concorrenza invece che a varianti di un’unica idea creativa nella scelta dei segni distintivi aziendali.
Nè c’è distintività accresciuta (sempre nella confondibilitò ordianria, non da rinomanza) : <<Infatti, il carattere distintivo accresciuto richiede il riconoscimento del marchio da parte del pubblico di riferimento e, nell’effettuare tale valutazione, occorre tenere conto, in particolare, delle caratteristiche intrinseche del marchio, compreso il fatto che esso contiene o meno un elemento descrittivo dei prodotti o dei servizi per i quali è stato registrato; la quota di mercato detenuta dal marchio; l’intensità, l’estensione geografica e la durata dell’uso di tale marchio, l’entità degli investimenti effettuati dall’impresa per promuovere il marchio; la proporzione del pubblico di riferimento che, grazie al marchio, identifica i prodotti o i servizi come provenienti da una determinata impresa; e dichiarazioni di camere di commercio e d’industria o di altre associazioni professionali (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).
Inoltre, le prove dell’acquisizione di un carattere distintivo accresciuto in seguito all’uso devono riguardare sia (i) l’area geografica di riferimento sia (ii) i prodotti e/o servizi pertinenti. La natura, i fattori, le prove e la valutazione del carattere distintivo accresciuto sono gli stessi della notorietà, anche se la soglia per la constatazione di un carattere distintivo accresciuto può essere inferiore.
Quanto al contenuto delle prove, maggiori sono le indicazioni che esse forniscono circa i vari fattori dai quali si può dedurre l’elevato carattere distintivo, tanto più rilevante e determinante. In particolare, le prove che, nel complesso, forniscono scarsi dati e informazioni quantitativi o nessuna, non saranno idonee a fornire indicazioni su fattori vitali quali la conoscenza dei marchi, la quota di mercato e l’intensità dell’uso e, di conseguenza, non saranno sufficienti per affermare l’esistenza di un carattere distintivo accresciuto>>.
Giudicando in base alle stesse prove (sempre profilo interessante per i pratici), è poi rigettata pure la domanda basata sulla rinmmanza.
Il caso è intreressante , affrontando un tema di attualità: il rapporto tra diritto di marchio e quello di parodia, da inserire nel diritto alla libetà di parola.
Il problema nasce quando il secondo è esercitato da imprenditori (anche gli artisti allora possono esserlo ed anzi lo sono nel diritto della concorrenza): c’è infatti il sospetto che vogliano lucrare sulla notorietà altrui.
La corte fa qui prevalere il diritto di marchio, appellandosi alla sentenza Supreme Court del 2023 Jack Daniel’s Properties, Inc. v. VIP Products LLC e a un precedente imprtante in del 2 circuito Rogers v. Grimaldi dek 1989 per cui la parodia va bene solo se e fino a che non generi confondibilità:
<<The Supreme Court’s decision in Jack Daniel’s forecloses MSCHF’s argument
that Wavy Baby’s parodic message merits higher First Amendment scrutiny under Rogers. As the Court held, even if a defendant uses a mark to parody the
trademark holder’s product, Rogers does not apply if the mark is used “‘at least in
part’ for ‘source identification.’” Id. at 156 (quoting Tommy Hilfiger Licensing, Inc.,
v. Nature Labs, LLC, 221 F. Supp. 2d 410, 414–15 (S.D.N.Y. 2002)).
Here, MSCHF used Vans’ marks in much the same way that VIP Products
used Jack Daniel’s marks—as source identifiers. As discussed above and
illustrated below, VIP Products used the Jack Daniel’s bottle size, distinctive
squared-off shape, and black and white stylized text to invoke an image of Jack
Daniel’s famous whiskey bottle.
Jack Daniel’s, 599 U.S. 148–49.
Likewise, MSCHF’s design evoked myriad elements of the Old Skool
trademarks and trade dress. Among other things, MSCHF incorporates, with
distortions, the Old Skool black and white color scheme, the side stripe, the
perforated sole, the logo on the heel, the logo on the footbed, and the packaging.
See Part I, above. MSCHF included its own branding on the label and heel of the
Wavy Baby sneaker, just as VIP Products placed its logo on the toy’s hangtag. But
even the design of the MSCHF logo evokes the Old Skool logo. And unlike VIP
Products, MSCHF did not include a disclaimer disassociating it from Vans or Old
Skool shoes. See Jack Daniel’s, 599 U.S. at 150 (noting the dog toy included a
disclaimer that read: “This product is not affiliated with Jack Daniel Distillery”).
A trademark is used as a “source identifier” when it is used “to identify or
brand a defendant’s goods or services” or to indicate the “‘source or origin’ of a
product.” Id. at 156 (alterations adopted). MSCHF used Vans’ trademarks—
particularly its red and white logo—to brand its own products, which constitutes
“quintessential ‘trademark use’” subject to the Lanham Act. Id. at 155 (citation
omitted); see also Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812–13
(mechanic’s use of Harley-Davidson’s bar and shield motif in his logo, despite
the “humorous[]” message, was traditional trademark use subject to the
likelihood of confusion analysis).
Moreover, although MSCHF did not purport to sell the Wavy Baby under
the Vans brand, it admitted to “start[ing]” with Vans’ marks because “[n]o other
shoe embodies the dichotomies—niche and mass taste, functional and trendy,
utilitarian and frivolous—as perfectly as the Old Skool.” Jt. App’x at 353. In
other words, MSCHF sought to benefit from the “good will” that Vans—as the
source of the Old Skool and its distinctive marks—had generated over a decades-
long period. See Jack Daniel’s, 599 U.S. at 156. Notwithstanding the Wavy Baby’s
expressive content, MSCHF used Vans’ trademarks in a source-identifying
manner. Accordingly, the district court was correct when it applied the
traditional likelihood-of-confusion test instead of applying the Rogers test>>.
La composizione del conflitto di interssi è ragionevole: ok alla parodia e alla libertà di espressine, ma in termini chiari e non equivoci (cioè senza alcun rischio di confondibilità).
La parodia come interesse antagonista della privativa di marchio è tema ancora non affrontato sistematicamente.
Pur se non espressamente previsto (art. 14 dir. 2015/2436; a differenza dal diritto di autore: dir. 29-2001 art. 5.3.k), è però in generale da ammettere. Resta il compito di individuarne i confini e cioè di conciliarlo con il diritto di marchio.
marchio posteriore for classes 5, 35 and 44, namely “pharmaceuticals”, “medical preparations”, “food supplements” and “dietetic substances for babies (colori rivendicati)marchio anteriore designating, inter alia, classes 5, 30 and 32, “ia” designating goods in class 10 and “ia” designating services in class 35.
<<Overall assessment of the likelihood of confusion
36 The enhanced distinctiveness of the earlier mark was not claimed. Its inherent
distinctiveness results from the distinctive element ‘iaʼ in the central and initial position
but is weakened by the fact that its second word ‘BABYʼ is descriptive. The last word
‘interapothekʼ cannot be seen as a meaningful expression: as explained before, even if its
part ‘apothekʼ can be related to ‘Apothekeʼ (German word for ‘pharmacyʼ) the
combination with the prefix ‘interʼ lacks any tangible sense and is not descriptive. The
element may be seen as allusive but still distinctive. Overall, the inherent distinctiveness
of the earlier mark is under average.
37 The level of attention of both, the professional and the general public is high. The mark
has been found aurally similar to an average degree but conceptually and visually only to
a low degree. For the relevant goods and services the visual aspect is not less important
than the aural one, because the goods are bought on sight and the services are often
contracted on basis of written descriptions (offers, catalogues, Internet searches).
Therefore, taking into consideration the high level of attention of the relevant public and
the weakened distinctiveness of the earlier mark, the likelihood of confusion cannot be
confirmed even for identical goods. Even less so can this likelihood exist for goods that
are only similar.
38 The other earlier marks invoked in the opposition are even less similar to the EUTM
application as they overlap with the latter in only two letters, but differ in a multitude of
factors (beginning, length, font of the letter ‘aʼ, colours, initial letter/sound, number of
syllables). The likelihood of confusion does not exist on the basis of these marks either.>>
Ma i consueti sei fattori per la confondibiità portano la corte a rigettare la domanda, nonsotante l’ulteriore elemento del public interest giocasse a favore dell’attore.
(segnalazione e link dal blog del prof. Eric Goldman)
1) in the present case, the earlier word mark, consisting of the element ‘thermrad’, and the dominant word element of the mark applied for, ‘termorad’, are of the same length, both being formed of eight letters. They thus overlap in so far as they contain the sequence of the letter ‘t’ followed by the string of letters ‘erm’ and ‘rad’. However, those signs are differentiated by the letters ‘h’ and ‘o’ and, in the mark applied for, by the geometric shape contained in the letter ‘t’ and the expression ‘aluminium panel radiator’, as well as by the stylisation of the typeface used.
76 In the light of the analysis contained in paragraph 67 above, it is clear that the elements differentiating the signs at issue either occupy a secondary position owing to their purely decorative character, as regards the stylisation of the typeface and the red geometric component, or are negligible, so far as concerns the expression ‘aluminium radiator panel’, due to its reduced size and proportion. Consequently, it must be held that the similarities between the word elements ‘thermrad’ and ‘termorad’ in the signs at issue outweigh their differences, since, in the present case, those differences are not sufficient to attenuate the visual similarities.
77 Consequently, the Board of Appeal justifiably considered that the marks at issue were visually similar to a high degree.
Phonetic similarity:
In the present case, the signs at issue coincide phonetically in that the word elements ‘therm’ and ‘term’ sound identical when pronounced, since, as is apparent from paragraph 66 of the contested decision, the letter ‘h’ is not pronounced in German, Dutch or French. The sound of the syllable ‘rad’ is also the same in the signs at issue. On the other hand, they differ in the sound of the letter ‘o’ and the expression ‘aluminium panel radiator’ in the mark applied for.
83 As regards that expression, it should be found, as the Board of Appeal considered, that it is highly probable that it will be ignored by the relevant public given its descriptive character and the secondary position it occupies owing to its smaller size and position at the bottom of the mark applied for (see, to that effect, judgments of 11 September 2014, El Corte Inglés v OHIM – Baumarkt Praktiker Deutschland (PRO OUTDOOR), T‑127/13, not published, EU:T:2014:767, paragraph 53; of 7 June 2018, MIP Metro v EUIPO – AFNOR (N & NF TRADING), T‑807/16, not published, EU:T:2018:337, paragraph 48; and of 14 June 2018, Lion’s Head Global Partners v EUIPO – Lion Capital (LION’S HEAD global partners), T‑310/17, not published, EU:T:2018:344, paragraph 39).
84 Consequently, the Board of Appeal was entitled to find that the marks at issue were phonetically similar to a high degree.
Conceptual similarity:
<<the Board of Appeal found that, despite the fact that the word elements ‘thermrad’ and ‘termorad’ did not convey a clear concept in relation to the goods at issue, both signs contained a word element which referred to the concept of ‘heat’ or ‘temperature’, namely ‘therm’ and ‘termo’. Nevertheless, since that similarity was based on an element the distinctiveness of which was weak, the Board of Appeal concluded that the signs at issue were conceptually similar to at least a low degree.
86 Those findings of the Board of Appeal, which, moreover, are not disputed by the applicant, are free from error and must therefore be upheld>>.
Distintività del marchio anteriore: normale, § 95
Sintesi:
<< 102 First of all, although the applicant insists, in the present case, that the distinctiveness of the earlier mark is weak, it has nevertheless been found, contrary to his assertion, that the distinctiveness of the earlier mark was normal.
103 Furthermore, it has been established that the goods covered by the mark applied for were identical or similar to the goods covered by the earlier mark. Similarly, as is apparent from paragraphs 77, 84 and 86 above, the signs at issue have a high degree of visual and phonetic similarity and a low degree of conceptual similarity.
104 In addition, the public to be taken into account for the purpose of examining the likelihood of confusion consists of both the general public and professionals, both displaying a high level of attention on account of the fact that the goods at issue are purchased infrequently and are expensive. In that regard, in so far as, in paragraph 82 of the contested decision, the Board of Appeal included in the assessment of the existence of a likelihood of confusion the part of the relevant public displaying a high level of attention, the Board of Appeal’s error, established in paragraph 34 above, is of no consequence.
105 In the light of all of the factors analysed above, it must be held that the conditions for finding that there is a likelihood of confusion are satisfied in the present case, on account of, in particular, the fact that the goods at issue are identical or similar and the overall similarity of the signs at issue, which are both formed of a fanciful and, therefore, distinctive word element in relation to those goods, and the normal distinctive character of the earlier mark, despite the high level of attention of the relevant public. Thus, in view of the interdependence of the various factors taken into account, it cannot be ruled out that the average consumer of the goods at issue residing in Benelux might believe that those goods come from the same undertaking or from economically linked undertakings.
106 Consequently, the complaint relating to the global assessment of the likelihood of confusion must be rejected>>.
OK. Ci pare tuttavia assai dubbio che il marchi odenominativo THERMRAD per <<<Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilation and water supply; radiators (heating); radiators for central heating’.>> sia valido in quanti mediament distintivit. Ci pare invee assai descrittivo e quindi nullo.
La fase amminsitrativa va male a Nestlè, il cuji segno è ritetnuto confondibile con l’anteriotià.
Uguale esito giudiziale.
In sintesi, Nestlè <<alleges, in essence, two errors made by the Board of Appeal in the global assessment. It maintains, first, that the Board of Appeal should have applied the case-law on short signs and followed EUIPO’s practice in that regard. Accordingly, a likelihood of confusion should have been excluded as the visual comparison is, in principle, decisive. In the applicant’s view, those principles were not mentioned at all, even though it had raised that matter in the proceedings before EUIPO. Secondly, the Board of Appeal did not take account of the fact that the visual aspect of the signs at issue plays a particularly important role with regard to the goods at issue. Those goods are sold in self-service stores, where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product>>§ 68.
Replica del Trib.:
<<It should be recalled that the Board of Appeal found, in paragraph 47 of the contested decision, that the earlier international registration had an average degree of inherent distinctiveness. In addition, having concluded that the conceptual comparison of the signs at issue was neutral, it took into account, in the context of the examination of the likelihood of confusion, the identity or high degree of similarity of the goods at issue, the low degree of visual similarity and the high degree of phonetic similarity between those signs in order to reach the conclusion that there was a likelihood of confusion, in the present case, for the Bulgarian-, Hungarian- or Latvian-speaking public at large with a level of attention which could vary from average to high.
65 The Board of Appeal added, in paragraph 48 of the contested decision, that even though the visual aspect was likely to play a role in the selection of the goods concerned, it was highly conceivable that, confronted with the international registration at issue, consumers would perceive it as a variation of the earlier international registration, configured in a different way according to the type of goods covered. That would in fact lead them to believe that the identical or highly similar goods originate from the intervener or, as the case may be, from an undertaking economically linked to the intervener.
66 First, it must be found that the applicant is wrong to maintain that the Board of Appeal failed sufficiently to take into account the visual differences between the signs at issue. As stated in paragraph 55 above, the Board of Appeal did indeed note, in the context of its global analysis of the likelihood of confusion, that there was a low degree of visual similarity between those signs. That does not mean, however, that it disregarded the case-law on short signs. Although it is true that, in short signs, small differences may frequently lead to a different overall impression, that is not the case here, since a significant part of the relevant public readily recognises the element common to the signs at issue, which is their dominant element.
67 In the light of those considerations, it is necessary, secondly, to take into account the fact that the signs at issue are phonetically similar to a high degree, if not identical, which is also the case for the goods at issue. Those findings cannot be ignored in the global analysis of the likelihood of confusion, contrary to what the applicant appears to maintain, but also play an important role in accordance with the principle of interdependence as referred to in paragraph 61 above. It should be noted, in that regard, that, even though the goods at issue are sold on a self-service basis and the visual aspect is of some importance, that does not prevent the phonetic similarity between the signs from becoming apparent when the goods are sold orally or mentioned in radio advertisements, or in oral conversations which are likely to give rise to an imperfect recollection of the sign. [è il punto più interessante]
68 Similarly, having regard to the identity conferred by the element common to the signs at issue, it is conceivable, as the Board of Appeal stated, that consumers, confronted with the international registration at issue, will perceive it as a variation of the earlier international registration, configured in a different way according to the type of goods covered, which will lead them to believe that the identical or highly similar goods originate from the intervener or, as the case may be, from an undertaking economically linked to the intervener.
69 It is appropriate in that regard to reject the applicant’s argument that, in order to arrive at that finding, the Board of Appeal was wrong to refer to paragraph 49 of the judgment of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties) (T‑104/01, EU:T:2002:262), given that it applied to customs in the clothing sector and did not concern short signs the stylisation of which would be capable of indicating the commercial origin of a product, but signs consisting of the words ‘fifties’ and ‘miss fifties’, the addition of ‘miss’ being capable of being understood as a clothing line for women.
70 It should be noted, in that regard, that the Board of Appeal merely stated that there was a likelihood of confusion irrespective of the particular importance of the visual aspect, given that, visually, the Bulgarian-, Hungarian- or Latvian-speaking public at large will always perceive the same alphanumeric combination in the signs at issue, albeit stylised differently. Furthermore, contrary to what the applicant appears to state, it is conceivable that consumers in sectors other than the clothing sector, including the food and dietetic supplements sector, may believe that identical or highly similar goods originate from the same undertaking or from economically linked undertakings when faced with signs containing identical verbal or numerical elements, even if those signs are short.[mi pare esatto]
71 Accordingly, it should be concluded that, in the light of the fact that the signs at issue are visually similar to a low degree and phonetically highly similar or even identical, that a conceptual comparison is not possible, that the goods at issue are identical or highly similar and that the level of attention of the Bulgarian-, Hungarian- or Latvian-speaking public at large may vary from average to high, the Board of Appeal was correct to find that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001>>.
Ebbene, Trib. UE 18.01.2023, T-443/21, conferma l’ufficio ammisnitgrativo nella decisione per cui non son confondibili (merceologicamente quasi uguali).
Disposizione governante la lite: art. 8.1.b reg. 2017/1001
§§ 42, 45, 48: consumatore di media attenzione o più che media.
Giudizio:
<< 116 In the present case, it has been established that the public to be taken into account for the purposes of examining the likelihood of confusion is the average non-English-speaking consumer in the European Union with a level of attention which varies from average to ‘above average’, depending on the category of services under consideration. That public is able to understand the meaning of the common word elements of the marks at issue. Furthermore, the services at issue in Class 41 covered by the mark applied for have been considered to be in part identical and in part similar to the services covered by the earlier mark in the same class. Furthermore, the signs at issue have been found to be visually similar to a low degree and phonetically and conceptually similar to an average degree. Lastly, it is apparent from the analysis carried out in paragraphs 110 to 113 above that the inherent distinctive character of the earlier mark is weak.
117 As a preliminary point, in accordance with the principle of the interdependence between the factors to be taken into consideration when examining the likelihood of confusion, it must be noted, as EUIPO rightly pointed out, that the ratio legis of trade mark law is to strike a balance between the interest which the proprietor of a trade mark has in safeguarding its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services, on the other (see, by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 41).
118 It follows that excessive protection of marks consisting of elements which, as in the present case, have very weak distinctive character, if any, in relation to the services at issue could adversely affect the attainment of the objectives pursued by trade mark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case.
119 It should be remembered that the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate, in that global assessment, to take into account the nature of the services at issue and to examine the objective conditions under which the marks may appear on the market (see judgment of 26 June 2008, SHS Polar Sistemas Informáticos v OHIM – Polaris Software Lab (POLARIS), T‑79/07, not published, EU:T:2008:230, paragraph 49 and the case-law cited).
120 Thus, in accordance with the case-law cited in paragraph 119 above, in the present case, it must be held that, in view of the fact that the phonetic and conceptual similarities are based exclusively on word elements which are devoid of distinctive character, the clear visual differences between them have a greater impact in the global assessment of the likelihood of confusion.
121 In that regard, it should be borne in mind that, where the earlier trade mark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53 and the case-law cited).
122 In those circumstances, it must be held that, in the context of a global assessment of the likelihood of confusion, having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue. That is all the more true for the part of the relevant public with an above average level of attention. Accordingly, it follows that the Board of Appeal’s error in relation to the level of attention of the relevant public in respect of the ‘educational’ services found in paragraph 50 above cannot have a decisive effect on the outcome of the global assessment of the likelihood of confusion.
123 It follows from all the foregoing considerations that the Board of Appeal correctly concluded that there was no likelihood of confusion on the part of the relevant public as regards the fact that the services at issue may come from the same undertaking or, as the case may be, from economically linked undertakings>>.
Trib. UE 13.07.2022, T-251/21, Tigercat International Inc., e c. EUIPO + Caterpillar interv., decide la lite sulla registrabilità del marchio denominativo TIGERCAT ala luce dell’anterità costituita da
marchio anteriore
I prodotti erano uguali (‘Specialised power-operated forestry equipment, namely, purpose built four wheel drive-to-tree and track type log bunchers, log loading machines, skidders and other forestry industry equipment, namely, bunching saws, bunching shears and components parts thereof’).
Il pubblico è molto attento, essendo professionale, § 23 ss
Predominanti nel secondo son entrambi gli elementi, alla pari. Nel primo, poi, la figura non oscura la parola, § 59.
Conferma che ricorre la visual similarity, § 64.
Ricorre anche quella fonetica, §§ 69-74. Qui l’interesse sta nel fatto che quello posteriore è composto e comprende quello anteriore.
Esatta è anche la stima di confondibilità concettuale (richiamo CAT), § 84.
In breve c’è rischio di confusione, § 94 e 97
Il Tribunale dunque conferma le decisioni amministrative
