Trademark

Two recent trademark dispute decisions, Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO, provide valuable insights into how the European Union Intellectual Property Office (EUIPO) and the European General Court (EGC) assess similarity, distinctiveness, and the likelihood of confusion between trademarks. These cases highlight the complexities involved in trademark disputes and illustrate the fine lines that can determine the outcome of such cases.

Bar Paris v Paris Bar (T-117/23)

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Background

On June 28, 2019, Superstudio 21 GmbH filed an application for the European Union trademark registration of the sign for foodstuffs and restaurant services. Kantstraße Paris Bar GmbH opposed the registraton based on its earlier German trademark, which covered similar services. Initially, the EUIPO’s Opposition Division upheld the opposition, but this decision was later annulled by the EUIPO’s Board of Appeal (BoA), leading to the General Court’s final decision.

Court Findings

The General Court focused on the descriptive nature of the word elements ‘Paris Bar’ and ‘Bar Paris’, given their association with Parisian culture and gastronomy. Despite their arrangement, these elements were considered lowly distinctive. The inclusion of a Gallic rooster as a figurative element in the contested trademark was deemed as distinctive and dominant as the word elements. However, the court ruled that there was only a low degree of visual similarity on account of the inversed order of the words, a high degree of phonetic similarity, and a limited conceptual impact due to the generic nature of the words.

The Court confirmed the Board of Appeal’s finding that the inherent distinctiveness of the earlier mark is very low. The opponent’s claim of increased distinctiveness due to intensive use was rejected because of insufficient evidence relating to one single bar in Berlin.

Ultimately, the General Court ruled out the likelihood of confusion based on the visual perception of the trademarks, which it considered predominant in the context of buying foodstuffs and visiting restaurant. This decision emphasizes the importance of visual differences in distinguishing trademarks, especially when the word elements are considered generic or descriptive.

ZERO MEAT v MEAT ZERO (R 2052/2023-2)

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Background

On september 29, 2021, CPF Food and Beverage Co., Ltd. applied for registration of the ‘ZERO MEAT’ trademark for meat substitutes, which was opposed by Norma based on their earlier ‘MEAT ZERO’ trademark. The opposition was initially upheld due to a likelihood of confusion, but the decision was overturned by the Board of Appeal.

Board of Appeal’s decision

The BoA found that the words ‘zero’ and ‘meat’ are basic English terms understood across the European Union, thus possessing low distinctiveness. The arrangement of these words and the inclusion of a numeral and color differences in the trademarks contributed to their overall impression, which the BoA found distinct enough to avoid confusion. Indeed, the different layout and color shades were significant enough to differentiate the trademarks in the market.

Finally, both trademarks referred to meat-free products and an environmentally friendly ethos, yet this was not enough to confuse the average consumer due to the non-distinctive nature of the descriptive words used.

Conclusion

The decisions in both Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO underline the importance of the distinctiveness of the elements that compose a trademark in determining the likelihood of confusion. These cases demonstrate that non-distinctive or descriptive elements afford a limited scope of protection, which is a crucial consideration for businesses when developing brand identifiers.

Finally, these decisions which do not appear to be in line with the case of the Court of Justice of the European Union might encourage a reevaluation of the CJEU’s approach regarding the weight given to the distinctiveness of earlier trademarks.

Paris Judicial Court, 3rd section, April 5, 2022, 20/12763

Sun Consulting SARL and M. Y W vs H&M Hennes & Mauritz LP et H&M Hennes & Mauritz SARL

In a judgment dated April 5, 2022, the Third Chamber of the Paris Court of Justice ruled on an infringement action between the European Union trademark “CREMIEUX” covering clothing, footwear and apparel products and the trademark “RUE CREMIEUX” under which perfumes are marketed.

In this case, despite the plaintiffs’ argument that stated that clothing and perfumes were similar goods regarding their complementarity and the close connection of their aesthetic function, the Court rejected the infringement action for lack of similarity between these products.

The owner of a trademark may prohibit the use, without their consent of a sign identical or similar to their trademark by a third party. This is to be noted in such circumstances, for example

• when such use occurs in the course of a trade,
• when relating to identical or similar goods and services to those for which the trademark has been registered and
• when there is the possibility for a likelihood of confusion, ie. undermining or initiating liability that could undermine the guarantee of the identity of origin, which is an essential function of the trademark.

Although French and European courts regularly encounter the issue of similarity between perfumes and clothing, uncertainties persist concerning the assessment of this similarity.

Which factors should be used to assess the degree of similarity between goods?

On several occasions, the Court of Justice of the European Union has stated different relevant factors to be used in assessing the degree of similarity between goods or services. The nature, purpose, use, distribution channels, or the competitive or complementary nature of the goods or services concerned, are taken into account.

Nevertheless, if such criteria is lacking, the European Court of Justice admits that a degree of similarity can remain if the goods present a certain aesthetic complementarity.

This complementarity will be retained when three cumulative conditions are fulfilled.

i) One product must be indispensable or important over the use of another.
ii) Consumers must consider the use of the goods together as usual and normal.
iii) Consumers must consider it common place for these goods to be marked under the same trademark.

The Court of Cassation (Supreme Court) adopts a different approach in comparison to that of the Court of Justice, whereby they look at whether the consumer is able to attribute to a common origin the goods and/or services at issue. However, if this interpretation is applied too widely, it could lead to qualifying goods as similar, thereby confirming that a risk of confusion is not altogether impossible or out of the question.

Even though the condition of trademark infringement must be interpreted in light of the risk of confusion, Article 9 of Regulation 2017/1001 states that the concept of similarity is both a necessary condition and an interdependent criteria of the risk of confusion. Therefore, the similarity of goods or services cannot depend on the possibility of a likelihood of confusion as it is the latter that depends in part on the similarity.

Can perfumes and clothing be considered similar goods under these factors?

In the present case, the Third Chamber of the Court of First Instance, considers that clothes and perfumes do not share the same nature or purpose and are not usually sold in the same stores.

Although they may have a similar function of enhancing the wearers appearance, this function is secondary and not convincing.
The primary function of clothing obeys and follows the rules of a purely functional purpose while perfume has for finality, the diffusion or intermingling of a pleasant smell. Therefore, the common use of both clothes and perfume during daily outdoor activities is not sufficient enough to characterize a relevant factor of similarity.

But what about aesthetic complementarity?

The Court found that perfumes were not important or even indispensable for the use of clothing, and that clothing was not important for the use of perfumes either.

This judgment may seem surprising regarding the jurisprudence issued by the Court of Appeal on the similarity between perfumes and clothing.

Indeed, in a decision dated September 23, 2021, the Court of Appeal of Aix-en-Provence had recognized as justified, the opposition to the registration of a trademark filed with the INPI for clothing. This was purely on the basis of an earlier trademark registered for perfumes and cosmetics.

The decision by the Court of Appeal was mainly based on the presence of identical distribution networks.

The Court of Appeal also attributed a significant role to the aesthetic function, which, according to the Court of Justice, cannot be considered as a sufficient factor.

This trend, which aims to make the principle of speciality more flexible, is mainly reflected in the luxury sector where well-known trademarks are very present.

In consideration of this fact, many decisions recognize the similarity between goods in class 3 (perfumes and cosmetics), goods in class 25 (clothing) or even classes 14 (jewellery) and 18 (leather goods).

Indeed, houses such as Louis Vuitton or Maison Margiela offer both clothes for sale and, to conquer a wider audience, perfumes. However, this diversity of products can also be found in non-luxury brands, with different ranges, such as Zara or Lacoste.

In this judgment, the Court of Justice goes against a French jurisprudential trend which qualifies perfumes and clothing as similar. Furthermore, according to the Third Chamber of the Court, the fact that fashion companies market perfumes under their own brand name, cannot be a sufficient factor to make these products similar.

Is it impossible to file an infringement action against a trademark offering perfumes for sale on the basis of an earlier trademark registered for clothing? And is this also the case vice versa?

In retrospect, it must be noted that even though it may not be necessarily so, the decision shows that the chances of success could very well be limited.

Nevertheless, French courts do not yet give a unified and homogeneous answer on this subject and decisions remain casuistic and sophistically cautious.

For example, the Paris Court of Appeal recently ruled in a decision dated September 14, 2022 that there was a risk of confusion between an earlier trademark filed for perfumery and cosmetics and a trademark intended to designate clothing. To determine this similarity, the Court based its decision on the fact that these products belong to the field of fashion, have the same aesthetic function, are targeted at the same clientele and can be marketed under the same trademarks by the same companies and distributed through the same distribution network.

Therefore, we will surely have to wait for the Court of Cassation‘s decision on this matter to obtain a standard and clearer answer in determining and ensuring a more specific and higher level of legal security and protection for trademark owners.

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