Similarity of signs of a Union figurative mark – earlier mark unsuccessful

Veröffentlicht am: 18. December, 2018

In a trademark dispute, VW’s action against the registration of a Union figurative trademark was dismissed by the Court of Justice of the European Union. The key question was whether the two components of a composite Union trade mark alone can be decisive in determining whether two signs are similar. The line followed by European case-law towards similarity of signs is continued in this judgment.


Specifically, the application concerned the Union figurative mark MAIN AUTO WHEELS. The defendants were the applicant, the Finnish company Paalupaikka Oy, and the Office of the European Union for Intellectual Property (EUIPO), which had registered the trade mark for the two Nizza classes 12 (vehicles) and 35 (advertising) and had previously rejected in its entirety an opposition by VW prior to the court proceedings. In the proceedings, VW relied on its two earlier Union figurative marks, registered inter alia for the goods and services concerned.

VW had argued, first, that there was a likelihood of confusion between its two trade marks and the trade mark applied for; second, that VW had relied on the reputation protection of its two trade marks and, third, that the EUIPO had failed to take sufficient account of it in its rejection and had thus failed to fulfil its duty to state reasons.

Similarity of signs

Distinctive by the dominant element?

The main issue in the proceedings was whether the mark applied for by the Finnish undertaking and VW’s two Union figurative marks were similar: As the main argument for similarity between the two marks, VW argued that the EUIPO had attached importance to the word element ‘MAIN AUTO WHEELS’ for the purposes of the overall assessment, although it was merely descriptive of the vehicles on offer and the related advertising and therefore devoid of any distinctive character. According to the statement of claim, the only factor to be taken into account is the dominant element which characterises the overall impression. This view was shared neither by the CJEU nor by the EUIPO: the assessment of marks composed of words and pictures could not be limited to one of the two components alone. It is true that one of the respective components may dominate the overall impression of the mark. However, it is only in exceptional cases that the assessment of the similarity of the signs can be reduced to this dominant component. The Court stated that, in the case of composite marks, the word element, rather than the figurative element, tends to dominate the mark as a whole, since a consumer typically mentions a particular product by its name and does not describe the layout of the mark.

No likelihood of confusion visually either

However, MAIN AUTO WHEELS, as a word element of the trade mark applied for, is neither phonetically nor conceptually similar to the two VW marks. However, even as regards the figurative form, the CJEU found that the mark applied for reinforced the round contour of the circle by its black background and connected the figurative element with the word element. Furthermore, the chosen line motif differs from that of VW’s two Union figurative marks: the lines of the VW marks touch the circumferential circle at all outer ends, while the points of the ‘M’ in the sign applied for do not. In this respect, the application mark does not correspond to the two Union figurative marks rotated by 180°, as complained of by VW. Due to these differences, the CJEU did not see any likelihood of confusion between the said marks.

Without similarity of signs no protection of reputation either

The reputation protection for the two VW trademarks could not prevent the registration of the application mark either: The CJEU ruled that the reputation protection also required a similarity between the trade marks in question and those already registered. This similarity does not have to be so high that the marks in question could be confused. Instead, a similarity is sufficient to enable the marks in question to be linked. But according to the CJEU, even this degree of similarity is not reached by the trade marks in the case specifically decided.

European case-law towards similarity of signs is continued

This judgment confirms the previous case law on similarity of signs, which was already made clear in the Thomson-Life decision in 2005 (ECJ, Oct. 2005, C-120/04). Already at that time it was stated that it could not depend on whether the matching part of a combination sign was also characteristic of the mark. Rather, the decisive factor is whether the other part, which distinguishes the two marks from each other, also retains an independent distinctive role.

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Source of text + picture:

T:2018:561 Volkswagen AG


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