EU General Court rules on likelihood of confusion between trade marks that use foreign script
The European General Court's decision in Loutfi Management Propriété Intellectuelle SARL v AMJ Meatproducts (Case C-147/14) concerned the use of non-Latin script in Community trade marks (“CTMs”). The General Court held that when assessing whether there was a likelihood of confusion between two marks, the pronunciation and meaning of any distinctive elements of the marks that use non-Latin script must be taken into account if the relevant public would appreciate those factors.
General Court’s decision
The case involved Arabic script. The marks in question were “el baina” (which means “sight”), “el benna” (which means “taste”) and “el bnina” (which means “softness”). Each was a figurative mark that included the words in both Latin letters and Arabic script (as shown below). The national court in Belgium found that the relevant public for assessing whether there was a likelihood of confusion between the marks was: Muslim consumers of Arab origin who ate halal food products in the EU and had at least a basic knowledge of written Arabic.
To show infringement of a CTM or to oppose the registration of a CTM where the marks are similar (but not identical) and the goods/services specified for each mark are identical or similar, it is necessary to show a likelihood of confusion between the marks amongst the relevant public. The existence of a likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the particular case. That assessment includes a visual, aural or conceptual comparison of the signs at issue, bearing in mind, in particular, their distinctive and dominant components. The likelihood of confusion must be assessed by reference to the perception of the relevant public (i.e. the average consumer of the goods/services in question).
The General Court held that, when assessing the likelihood of confusion, the Belgian court had to take into account the pronunciation and conceptual differences between the marks even though these differences would only be appreciable to someone who understood Arabic, because the relevant public in this case did understand Arabic. To fail to take these differences into account would be a failure to take into account all the factors relevant to the circumstances of the case by reference to the perception of the relevant public.
Although this case was considering Arabic script the principles will apply similarly to Chinese, Russian and Indian characters. This case will strengthen many CTM applications where the mark includes, for example, Chinese script (particularly where that script is a dominant element of the mark) provided the relevant public for the mark is made up of Chinese speakers. This is because a business will be able to rely on the meaning and pronunciation of the non-Latin characters to distinguish its marks from the marks which an opponent relies upon to oppose the application. This will also be true for marks that use non-European words transliterated into Latin characters (where the relevant public would appreciate this).
Conversely, the protection offered by CTMs that use non-Latin characters/words may be slightly weakened, as potential infringers may be able to show that they are not infringing the trade mark in question by raising arguments as to pronunciation and meaning. Trade mark owners (and their representatives) can seek to mitigate this risk by arguing that the relevant public for the mark in question is not solely made up of people that understand the relevant foreign script.