Advertising agencies arguably care more about their image than any other business, particularly in terms of their logo. In its judgment of 30 September 2014, the Court of appeal of Paris ruled on the likelihood of confusion between two trademarks belonging respectively to Graphèmes and Graphéine, two companies operating in the field of graphic design.
The trademarks were inclusive of a logo namely:
As graphics professionals tend to focus on the presentation of trademarks, the Court of appeal held that the two disputed trademarks were indeed distinct. Indeed, while the Graphème company argued that the mark “Graphéine” was an imitation of its earlier mark, the Court held that “the logos used by Graphéine are visually very different from that adopted by Graphèmes” and that “the mere reproduction of the colour does not generate the likelihood of confusion in the case.” Likewise, when taken as a whole, and given the distinctive visual and phonetic elements, the likelihood of confusion could not be proven with regard to the logo of “Graphéine.”
In their assessment of the likelihood of confusion, the judges took into account the technical details and various references to the graphic design industry. The services were intended for an informed public, namely design professionals. Usually judges must make a general assessment by examining the evidence as a whole and determine the “overall impression” made upon average consumers. This method of assessment is derived from several judgments of the Court of Justice of the European Union.
Yet in this case, the Court of appeal focused primarily on design professionals, which could perhaps be challenged. In their address to graphics professionals concerned with the visual rendering of their logos, the judges exhaustively analyzed the particulars of both trademarks including fonts and differences of pronunciation. For example, the court phonetically scrutinized the two terms to reveal their differences, so that, ultimately, “strong differences in pronunciation” are not necessarily discernible by a layman, as the court itself noted. Indeed, if any individual was to see the logos at issue from afar, he could easily be confused (same size, same length, same prefix and a similar suffix). Furthermore, with regard to colors, tonal differences are not as evocative they appear to be. One wonders in this respect whether the decision would not have been different had the court focused on consumers, to whom the two terms may look similar.
Nevertheless, the assessment of the likelihood of confusion while keeping in view the professionalism of the stakeholders involved in the trial is not a trivial one since both advertising agencies cater mainly to other professionals or clients. Therefore, in light of the case law, this decision, although it is questionable in espousing a strict assessment of the likelihood of confusion in the design sphere, makes a lot of sense.
 Sabel/Puma CJCE, 11 November 1997, aff. C-251/95, Canon CJCE, 29 September 1998, aff. C-39/97, Llyod CJCE, 22 June 1999, aff. C-342/97.