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Europe: Assessing similarity of marks

The holder of word mark JOY, Jean Patou Worldwide, filed an opposition against the EU registration of the mark HISPANITAS – Joy is a choice. The Opposition Division upheld this opposition and rejected the application for registration for goods in class 3 on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

Following this rejection, the holder of the opposed application filed an appeal with the EUIPO claiming that the opposition decision should be set aside. The Board of Appeal found that, although the element joy was present in both marks, there were a number of visual and phonetic features which precluded the signs from being perceived as similar. The word element hispanitas was the dominant element. The word joy formed only part of a unit that was of secondary importance, and the phrase joy is a choice was perceived as a laudatory slogan. The conclusion that there was no likelihood of confusion, would not change, even if it were accepted that the signs were similar in a very slight way and assuming that the earlier mark had enhanced distinctiveness, acquired through use. The signs at issue leave a significantly different overall impression in the minds of the relevant public.

Jean Patou criticised the Board of Appeal and claimed that joy is a choice should be compared with JOY separately from HISPANITAS, instead of comparing each mark in its entirety.

According to case law, however, assessment of similarity between marks means more than taking one component of a composite trade mark and comparing it with another mark. The comparison must be made by examining the marks in question as a whole. While the overall impression conveyed to the relevant public by a composite trade mark may be dominated by one or more of its components, assessment of similarity solely on the basis of the dominant element can be carried out only if all the other components are negligible. According to the court of first instance, HISPANITAS – Joy is a choice is presented at registration as a single sign and as none of the elements overstep the other, it cannot be split into two separate marks to be compared separately to the earlier mark.

The court held that the Board of Appeal – after considering that there was a slight degree of similarity – could not rule that a global assessment of the likelihood of confusion could be omitted. However, according to the court, this cannot lead to the annulment of the decision as the court has issued this assessment for the sake of completeness. The court of first instance endorses the earlier judgment of the Board of Appeal of the EUIPO that there would be no likelihood of confusion between earlier word mark JOY and the mark HISPANITAS – Joy is a choice, both for goods in class 3.

Denys Bertels

V.O.Carnegieplein 5, 2517 KJThe HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67

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