Having won its case in the Cancellation Division and before the First Board of Appeal, Casur, the registered owner of the EGLÉFRUIT mark, was again successful before the General Court in fending off Cabel Hall's an attempt to declare the mark invalid. The challenge to EGLÉFRUIT came from Cabel Hall's figurative mark "UGLI fruit - the affliction is only skin deep". The application for invalidity was based on Articles 52(1)(a) and8(1)(b) of Regulation 40/94 (now Articles 53(1)(a) and Article 8(1)(b) of Regulation 207/2009).
The goods in question were identical (registered in Classes 29 and 31), but Cabel Hall disputed the Board of Appeal's finding with regard to similarity of marks and the subsequent likelihood of confusion. "The assessment of the visual, phonetic and conceptual similarity of the signs in question must be based on the overall impression given by those signs, bearing in mind, inter alia, their distinctive and dominant components" (para 32).
With regard to the visual similarity the Court agreed that although both marks in question had "g" and "l" as second and third letters respectively, consumers were more likely to pay attention to the first and last letters. Further,the Court accepted the OHIM's submission that although it is appropriate to consider dominant and distinctive parts of the signs, no element should be ignored due to its low level of distinctiveness. And so EGLÉFRUITwas compared with UGLI.
The Court found that there was slight phonetic similarity but it was not sufficient to offset the phonetic differences between the signs when pronounced in their entirety. Therefore, the pronunciation of the signs was globally different due to the "fruit" part and the letter "é" inEGLÉFRUIT.
When looking at the full figurative mark, Cabel Hall did not object to the finding that there was no visual similarity as the bulldog and the citrus fruit were "prominantly positioned in the earlier mark, the representation of the dog having a high degree of distinctiveness in relation to the goods at issue, unlike the representation of the citrus fruit, considered in isolation" (para 41).
It was held that there were visual differences between the signs, in particular as a result of the dominant and distinctive figurative element (bulldog guarding the fruit). Further, the General Court found that