In Case T-118/16, the EU General Court ("GC") showed that, in trade mark law, one letter can make all the difference.
The Belgian company bpost NV sought to register the word sign "BEPOST" as an EUTM for products in Classes 16, 35, 38 and 39, such as "transport and delivery of postal items". The German company Deutsche Post AG opposed the mark applied for on various grounds. The opposition was based, in particular, on the German word mark "POST" and on the figurative EUTM depicted on the right – both covering various products, including postal services and related products.
The Opposition Division rejected the opposition, and the Board of Appeal ("BoA") dismissed the appeal filed by Deutsche Post. In yesterday's decision, the GC agreed with the BoA's findings.
Referring to LTJ Diffusion (Case T-346/04), the GC established that a market survey produced by Deutsche Post for the first time before the Court could not be taken into account.
As regards the earlier national word mark "POST", Deutsche Post did not dispute that the products in question were identical or (remotely) similar. The GC confirmed that "the signs at issue were similar to a low degree, but had significant visual differences, despite the common element 'post'" (para. 42). Due to the additional "be" in the mark applied for, the degree of aural similarity was also low. Conceptually, the element "be" was "of particular importance in the global assessment since, unlike the term 'post', it does not allude to the goods and services in question and, accordingly, helps considerably to distinguish the marks" (para. 45).
The Court rejected Deutsche Post's argument that, in the absence of elements establishing conceptual differences, there was a high degree of conceptual similarity. In the GC's view, the "position of the element 'be' at the beginning of the word element 'bepost' of the mark applied for was such as to make it slightly dominant, in accordance with the case-law that the relevant public normally attaches more importance to the first part of words" (para. 47). The Court found that the "word element 'post' in the mark applied for, when combined with the element 'be', is understood by the relevant public as a reference to 'postal services'" (para. 45) and that it "has a rather abstract meaning, since it is grammatically unusual for the German consumer who might not necessarily perceive it as a meaningful expression" (para. 48).
The GC concluded that "despite certain resemblances between the marks" (para. 55) there was no likelihood of confusion. The Court pointed out that even an enhanced distinctiveness of the earlier mark would not have justified a different conclusion. And the earlier "POST"-mark did not play an independent distinctive role within the mark "BEPOST", since the element "post" within the mark applied for "cannot be considered distinctive" but was "entirely descriptive" (para. 69).
As regards the earlier figurative EUTM "ePOST", there was no similarity with regard to some of the goods applied for (e.g., "printed matter"), but the remaining products were identical or somewhat similar. Despite the common element "post", the signs were considered to show "significant visual, aural and conceptual differences" (para. 89). Due to the different colours and typefaces used, the "overall visual impression of the marks" was different (para. 81). Contrary to the view of Deutsche Post, the distinctive character of such visual elements was "no weaker than that of the word element 'post'" (para. 81). Aurally, the signs differed in the pronunciation of the letter "b". And on a conceptual level, they were different because the element "e" of the earlier mark referred to the concept of "electronic", while the element "be" of "BEPOST" did not.
As regards national rights in the designation "POST" invoked by Deutsche Post on the basis of prior use in Germany, the GC set out that the differences identified above were sufficient to rule out a likelihood of confusion within the meaning of Section 15 of the German Trade Mark Act.
As regards the protection of the allegedly reputed national mark "POST", the GC did not examine the reputation in detail. It noted that consumers would not establish a link between the mark "BEPOST" and the earlier mark "POST". The registration of that mark "at the national level does not mean that that term […] has such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that term". Deutsche Post's argument to the contrary "is intended, wrongly, to limit the use of the term 'post' to only those postal services covered by the earlier national word mark POST. Furthermore, […] that intention is incompatible with the aims of national or EU legislation in the field of trade marks" (para. 117).
Readers that have made it this far are hereby asked for forgiveness for the excessive use of direct quotations, which was intended to underline how remarkable some of the GC's statements seem.
The decision is striking because it deviates from the usual doctrine of the GC according to which even a coincidence of two marks in an element of weak (read: no) distinctive character can suffice to cause a likelihood of confusion (see, for instance, Case T-735/15 SHOP ART and Case T-127/13 PRO OUTDOOR). In yesterday's decision, the GC did not blindly apply that doctrine but considered wider implications of the matter.
While this policy-driven approach becomes particularly clear in the closing sentences of the decision, the GC's remarks with regard to the similarity of signs are slightly less conclusive. Trying to match this section of the present judgment with previous decisions of the GC may cause some head scratching. By way of example, the GC recently confirmed a high degree of visual and aural similarity between the marks "INWEAR" and "IWEAR", even though the goods in question related to clothing items (see Case T-622/14). In a different case, the GC found that two marks, covering services related to providing drinks, could be conceptually similar due to the coinciding term "coffee" (see Case T-398/16).
Thus, yesterday's outcome stands apart from many decisions of the GC involving trade marks that coincide in terms deemed to be weakly distinctive. That being said, the outcome is in line with a previous decision of the GC concerning another "POST"-variant mark (see Case T-102/14).
Undoubtedly, the decision contains many more aspects that would justify writing one or several further blog posts. As always, readers are invited to leave their comments below.