TRADEMARKS
Because the letter’s worth it
A case involving L’Oréal has clarified the General Court’s position on protection for single letter marks, explains Henrike Strobl of Nordemann.
The General Court of the European Union issued another decision in a trademarks conflict on November 9 by further specifying the scope of protection of single letter trademarks. The judgment is available online here. This article will introduce the facts of the case, summarise and analyse the court’s decision, and provide an outlook.
Facts of the case
The company L’Oréal applied for the following figurative trademark for hair cosmetics in class 3 (see figure 1).
Figure 1: L’Oréal’s applied-for mark.
The owner of a prior single letter figurative trademark, which is inter alia protected for ‘shampoos’ in class 3, filed an opposition against L’Oréal’s application claiming likelihood of confusion between the two trademarks pursuant to Art. 8(1)(b) of the European Regulation 2017/1001 (EUTMR) (see figure 2).
Figure 2: Opposer’s mark
First, the EUIPO’s opposition division rejected the opposition, denying a likelihood of confusion. Following the appeal of this decision by the owner of the older trademark, the office’s board of appeal annulled the decision and upheld the appeal. It argued in favour of a likelihood of confusion, meaning that the relevant public would assume that the identical goods under both trademarks come from the same undertaking or economically linked undertakings.
L’Oréal filed an action before the General Court raising a plea in law, alleging infringement of Art. 8(1)(b) EUTMR. The court annulled the decision by denying a likelihood of confusion in the absence of a similarity between the trademarks at hand.
”The court has made clear that the more stylised the single letter trademark is the broader its scope of protection, as it is awarded a normal distinctive character.”
Henrike Strobl, Nordemann
The court’s assessment
The sole question to decide for the court was whether the opposed trademarks are similar or not.
First, the court highlighted that according to settled case law the comparison between the trademarks requires examining each mark as a whole, while the overall impression of a composite trademark might be dominated by one or several components.
While the board of appeal noted that the large letter ‘K’ in the earlier trademark was dominant while the below small letter ‘K’ and the word ‘WATER’ are secondary in the overall impression of L’Oréal’s mark, the court underlined that the component ‘K WATER’ takes a significant and notable part within the whole trademark.
This led the court to ascertain that these elements cannot be neglected when comparing the signs at hand. Consequently, the two signs had to be compared not only on the base of their dominant elements, each of which are the letter ‘K’, but by taking into consideration the component ‘K WATER’ of the younger sign.
As a result, the court found that the signs at hand are visually similar only to a low degree. It noted that the graphic and stylistic differences between the signs are clearly visible considering that the public will easily perceive such differences in the case of single letter signs.
According to the court, the board of appeal had underestimated the impact of the ‘K WATER’ element and thus came to the wrong conclusion that the trademarks are phonetically similar to only a low degree too. By also considering the element ‘K WATER’ in the conceptual comparison the court concluded that the signs are even different in this aspect.
When assessing the distinctive character of the earlier mark the court highlighted that single letter trademarks are expressly recognised by legislation (cf. Art. 4 EUTMR). Consequently, a single letter mark has at least a minimum degree of distinctiveness.
But according to settled case law, the distinctive character of single letter marks is low if that letter is not or only slightly stylised and is not combined with other relevant figurative elements. Due to the high degree of its stylisation, the court found that the earlier trademark is of normal distinctive character.
Within the global assessment of likelihood of confusion, the court underlined that recognising a likelihood of confusion with a prior highly stylised single letter mark would lead to a de facto monopoly over a letter for specific goods if the younger trademark is stylised differently and combined with further elements.
Such a broad scope of protection for single letter trademarks would not be in line with the court’s jurisprudence. According to this, the purpose of an opposition against single letter trademarks is only to prevent trademark registrations establishing a likelihood of confusion. But oppositions should not prevent the registration of trademarks consisting of the same (capital) letter per se.
Analysis and outlook
The current General Court’s decision underlines the rather tight scope of protection of single letter trademarks. It is thus fully in line with the established case law (cf. eg GC, judgment of November 9, 2004, case C-203/02) according to which single letter trademarks cannot be successfully opposed to trademarks of the same letter unless there are relevant similarities between both signs.
Once again, the court has made clear that the more stylised the single letter trademark is the broader its scope of protection, as it is awarded a normal distinctive character. Only minimally stylised trademarks enjoy a low distinctive character and can therefore only in rare cases—where the signs’ similarity is nearly identical—be opposed to younger trademarks.
In the present case, the court could base its decision with good reason mainly by considering the smaller element ‘K WATER’ of the opposed application within the comparison of the opposed signs. Indeed, the case would have been more interesting and possibly even borderline if the younger trademark had consisted only of the calligraphic large letter K. To take a stance: In this thought experiment, the applicant would have had a rather good position due to the completely different typeface of the then opposed two ‘K’s and the particularly stylised older trademark with its heavily curved double line effect.
Henrike Strobl is an attorney at Nordemann. She can be contacted at: henrike.strobl@nordemann.de
Images, from top: Shutterstock / Subbotina Anna, Ground Picture