Deciphering Brand Confusion: A Deep Dive into Linguistic Analysis in the EU Trademark Law

Introduction: The intersection of language and law in EU Trademark Disputes


In a landmark decision on July 26, 2023, the European Union Court underscored the critical role of linguistic analysis in adjudicating cases of brand confusion. This case, involving the nuanced understanding of language in trademark law, sets a precedent in legal circles and offers a comprehensive look at the intricate nature of trademark disputes within the EU’s dynamic linguistic landscape.


Background: The Case of Frutania vs. Frutaria


In 2013, Markus Schneider filed a trademark application for EU figurative trademark “Frutania,” covering various products and services. Frutaria Innovation, SL, holder of the EU figurative mark “Frutaria” registered in 2010, filed an opposition.


In July 2023, the European Union Court acknowledged a risk of confusion between the “Frutania” trademark application and the earlier “Frutaria” mark. The Court indeed emphasized that, in assessing confusion between two EU trademarks, linguistic knowledge must be considered.


Linguistic Considerations: Assessing the Risk of Brand Confusion


A crucial argument in this case involved the definition of the concerned public. The group of consumers considered relevant in assessing the risk of confusion can be challenged, namely the Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian, and Finnish populations, for whom the use of the term “frutaria” was arbitrary and therefore distinctive.


The inclusion of the Lusophone and Hispanophone public in this assessment is also questionable. These populations perceived in the earlier “frutaria” mark an evocation of the Spanish term “frutería” (grocery, fruit store). Therefore, the overall and particularly conceptual differences between the “Frutaria” and “Frutania” signs are significant enough to exclude any risk of confusion.


Nevertheless, in its decision, the appeal board indicated that it could not be assumed that consumers in Slavic-speaking countries as well as in Hungary, Estonia, and Finland had sufficient knowledge of Spanish to understand that the term “frutaria” was close to “frutería,” which designated a fruit store.


Legal Precedents and Linguistic Proficiency


Jurisprudence confirms this viewpoint, asserting that mastery of a foreign language cannot be generally presumed (cf. particularly the decision of the European Union Tribunal of September 13, 2010, in the case Inditex/OHIM v. Marín Díaz de Cerio (OFTEN), Case T-292/08 [paragraph 83]).


Although it is generally accepted that most consumers know basic English terms, it seems that this is not the case for the Spanish language. Consequently, the verbal element “frutaria” is distinctive and predominant compared to the simple figurative elements, which are therefore secondary.


In this particular case, the tribunal noted that the Appeal Board had correctly assessed the intrinsic distinctiveness of the earlier mark, taking into account the importance that the word element of the earlier mark could have for the part of the relevant public composed of Bulgarians, Croatians, Slovaks, Czechs, Poles, Slovenians, Hungarians, Estonians, and Finns. Therefore, the tribunal concluded that the Appeal Board had made no error in judgment by focusing its examination of the risk of confusion on this specific part of the relevant public.



Implications: A Refined Approach to EU Trademark Law


The Tribunal, referring to relevant jurisprudence, highlighted that when an earlier mark on which opposition is based is a European Union mark, it is not necessary for the risk of confusion to exist in all Member States and all linguistic areas of the European Union. The unitary nature of the European Union trademark allows it to be invoked against any subsequent trademark application that could potentially infringe on the protection of the first mark, even if the confusion is limited to a specific part of the European Union.


In other words, just because the risk of confusion could be ruled out for Lusophone and Hispanophone countries, based on conceptual differences, does not mean it did not exist for other countries of the European Union.


Conclusion on Linguistic Factors in EU trademarks


The EU Court’s decision in July 2023 marks a pivotal moment in trademark law, weaving linguistic intricacies into the fabric of legal reasoning. As businesses continue to operate in an increasingly globalized market, the significance of linguistic considerations in legal strategies becomes ever more pronounced. This case not only sheds light on the complexities of trademark disputes but also establishes a precedent for incorporating linguistic analysis into legal practice within the European Union and beyond.