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Michelin bursts Continental's trade mark application



James Nurton, London


The Court of Justice of the EU upheld a finding of likelihood of confusion between Michelin's X trade mark and Continental's application to register XKing - even though the EU General Court had "erred in law"

XKing
Continental's EUTM application
Continental filed an application at the EUIPO to register its mark (pictured) for "tyres; inner tubes for tyres" in class 12 in 2012.

However, it was immediately under pressure from Michelin, which filed an opposition claiming there was a likelihood of confusion with its mark (pictured), which was registered in France.

X case
Michelin's French trade mark
The opposition division upheld Michelin's opposition, but the Fourth Board of Appeal found its claims to be over-inflated. It put the brakes on, ruling that the opposition should be rejected. 

In 2015, the General Court overturned the Board, finding that there was a likelihood of confusion given (i) the strong similarity or identity of the goods concerned, (ii) the average degree of similarity between the mark applied for and the earlier French trade mark and (iii) the normal degree of inherent distinctiveness of that earlier trade mark.

Pumped up

In the fourth re-tread of these arguments, in a decision published on July 26, the CJEU upheld the General Court's conclusion but disagreed in part with its reasoning.

The Court criticised the General Court for finding that the earlier French mark had a normal degree of inherent distinctiveness, as its assessment of that mark was based on "a distortion of [the] evidence".

However, it said this narrow finding was not sufficient for the judgment to be set aside as "the General Court could find that there was a likelihood of confusion between the marks at issue on the basis of other legal grounds". 

The Court stressed that even in a case involving an earlier mark of weak distinctive character, the General Court may hold that there is a likelihood of confusion based on "a similarity between the signs and between the goods or services covered". In this case, the fact that the earlier French mark had a normal, rather than weak, degree of inherent distinctiveness was irrelevant.

Michelin was represented by Eleonora Carrillo of Jacobacci & Partners in Spain and Continental by Olaf Gillert, Katrien Vanden Bossche, Birte Köhn-Gerdes and Jan Schumacher of Taylor Wessing in Germany.


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