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CJEU: El Corte Ingles is lost in translation - or is it?

The Court of Justice of the European Union (CJEU) recently handed down its judgment in what can now fairly be called the 'El Corte Inglés Saga' involving aspects of translation, confusion and connection or the lack of the aforesaid:

In February 2010, The English Cut SL applied to register the word sign 'The English Cut' as a Community trade mark (CTM) in respect of "Clothing, except suits, trousers and jackets; footwear, headgear" in Class 25. El Corte Inglés SA opposed on the basis of its earlier Spanish word mark 'El Corte Inglés' (covering "footwear" in Class 25) and the earlier CTMs shown on the left (covering "clothing, footwear, headgear" in the same Class). The grounds relied on in support of the opposition were those set out in Article 8(1)(b) CTMR and (5) of the CTM Regulation (CTMR).

In July 2011, the Opposition Division rejected the opposition. Subsequently, El Corte Inglés appealed, but the First Board of Appeal dismissed the appeal for the following reasons:

The conflicting signs were not similar overall. Visually or phonetically, there were no similarities. Conceptually, there was a minimal similarity concerning the word 'English'. The word sign 'The English Cut' would be perceived as a fanciful name by the Spanish public, which did not have a good command of English. However, the term 'English' would be understood as expressing a concept similar to that expressed by the Spanish term 'Inglés'.

The words 'El Corte' and 'Cut' were the dominant elements of the signs at issue and the relevant public would not be able to establish any 'conceptual link' between them. Consequently, the signs were different overall, with the result that the opposition, in so far as it was based on Article 8(1)(b) CTMR, was rejected.

As regards Article 8(5) CTMR, in spite of the reputation of the earlier marks, El Corte Inglés had not provided sufficient evidence that there was potentially any detriment being caused to or unfair advantage being taken of their reputation.

El Corte Inglés then applied to the General Court (GC) to annul the decision of the Board of Appeal, maintaining that the Board had misapplied Article 8(1)(b) and (5) CTMR. However, the GC dismissed this application (see Case T-515/12, reported here), finding:

The signs were different overall. They were neither visually nor phonetically similar and only shared a low degree of conceptual similarity. While the literal meaning of the signs at issue was the same, Spanish consumers would be able to perceive that meaning only after translating 'The English Cut' into Spanish, which precluded them from making an immediate conceptual connection between the signs.

Since one of the cumulative conditions for the application of Article 8(1)(b) CTMR was not satisfied, there was no need to carry out a global assessment of the likelihood of confusion. Hence, the condition of a similarity of the signs, which is also necessary for the application of Article 8(5) CTMR, was allegedly not satisfied either.

El Corte Inglés had no intention of giving up just yet and appealed. In its recent decision, the CJEU set aside the judgment of the GC in so far as it was held in that judgment that it was apparent from the fact that the degree of similarity between the signs did not result in a likelihood of confusion that the conditions for the application of Article 8(5) CTMR were not satisfied either. The appeal as to the remainder was dismissed and the CJEU referred the case back to the GC.

El Corte Inglés based its appeal on three different grounds, two of which (concerning likelihood of confusion) were rejected. As regards the third ground of appeal, alleging infringement of Article 8(5) CTMR, the CJEU confirmed that the protection which that provision lays down in favour of marks with a reputation may apply even if there is a low degree of similarity between the signs (insufficient to create a likelihood of confusion). Therefore, if there is some similarity between the signs, it always has to be examined whether the relevant public is capable of establishing a link between those signs, irrespective of whether the signs will be confused. In failing to carry out that examination, the GC erred in law. This result is in line with the CJEU's Golden Balls decision (see joined Cases C-581/13 P and C-582/13 P, reported by the IPKat here).

OHIM maintained that it could be deduced from the GC's findings that the conditions for the application of Article 8(5) CTMR were not satisfied on the grounds that the relevant consumers were not able to make an immediate conceptual connection between the signs at issue. However, the CJEU reiterated that the provision does not require the connection or link to be established immediately.

Moreover, the CJEU held that its finding was not called into question by the case law relied on by OHIM (in particular, Case C-552/09 P concerning the opposition against the figurative mark "TiMi KiNDERJOGHURT" based on the earlier word mark "KINDER", reported here). Said the CJEU, although in that case there was a word element which was common to both signs (i.e., the word 'kinder'), the "General Court had formally held [in Case T-140/08, para. 59], contrary to what is the case in the judgment under appeal, that there was no similarity between the signs" (…arguably a quite, ahem, formalistic criterion to distinguish the cases).

Turning to a seemingly more trivial matter, it may be futile to go into the details of whether or not it is nowadays correct, let alone appropriate, to state that the Spanish public, including the younger generation, does not have sufficient command of English to understand the words 'the', 'English' and 'cut'. More interestingly, however, this Blogger – being able to speak a few words of Spanish himself – had the opportunity of discussing the present case with a Spanish native speaker. Asked whether the term 'The English Cut' would create any noteworthy association when used in connection to clothing, the mentioned member of the relevant public responded almost instantly naming the appellant's trade mark 'El Corte Inglés'. Admittedly, the result of this highly informal and for obvious reasons non-representative 'survey' was a little contrary to expectations. But even if the relevant public is capable of establishing the required 'link between the marks', there is, of course, the question of whether the remaining conditions of Article 8(5) CTMR would be met.

For now, one can only speculate as to whether or not the GC would confirm the Board of Appeal's finding that El Corte Inglés had not provided sufficient evidence that there was potentially any detriment being caused to or unfair advantage being taken of the reputation of the earlier marks. Therefore, the saga continues and, in the end, El Corte Inglés might or might not be lost in translation…

Posted by: Christian Tenkhoff @ 09.16
Tags: El Corte Ingles; CJEU; likelihood of confusion; reputation; unfair advantage; detriment; link,
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