In its Judgment of 10 December 2015 in El Corte Inglés v OHIM, C-603/14 P, EU:C:2015:807, the Court of Justice of the European Union (CJEU) decided on a trademark case involving the Spanish commercial retailer El Corte Inglés (ECI) and its opposition to the registration of the trademark 'The English Cut'--which is the literal Spanish-to-English translation of ECI's trademark 'El Corte Inglés'.
ECI had opposed the registration of the trademark 'The English Cut' on the basis that it infringed Art 8(1)(b) of the Community Trademark Regulation (CTR), according to which a proprietor of an earlier trade mark can successfully oppose the registration of a new trademark 'if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark' (emphasis added).
ECI also opposed the registration on the basis of Art 8(5) CTR, according to which 'the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark' (emphasis added).
It is important to stress that both grounds for opposition are based on the identity or similarity of the previous trade mark and the new trade mark applied for. Whether these two opposition grounds rely on the same or different tests of similarity has been heavily litigated and constituted the nub of the legal dispute in the El Corte Inglés v OHIM case.
As immediate precedents, in Intra-Presse v Golden Balls (C-581/13 P, EU:C:2014:2387, discussed here) and, previously, in Ferrero v OHMI (C-552/09 P, EU:C:2011:177), it was stressed that
72 The Court has consistently held that the degree of similarity required under Article 8(1)(b) ..., on the one hand, and Article 8(5) ..., on the other, is different. Whereas the implementation of the protection provided for under Article 8(1)(b) ... is conditional upon a finding of a degree of similarity between the marks at issue so that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) ... Accordingly, the types of injury referred to in Article 8(5) ... may be the consequence of a lesser degree of similarity between the earlier and the later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them ...
73 According to the same case-law, Article 8(5) ..., like Article 8(1)(b), is manifestly inapplicable where the General Court rules out any similarity between the marks at issue. It is only if there is some similarity, even faint, between the marks at issue that the General Court must carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public (C-581/13, paras 72-73, emphasis added, references omitted and emphasis added).
This seemed to point out to a single test for the existence or not of similarity. A negative answer to the test would exclude the analysis of whether the degree of similarity sufficed to engage either Art 8(1)(b) or Art 8(5) CTR protection. On the contrary, a positive answer to the test would require an assessment under both tests. The CJEU has now elaborated on this position and further clarified that
39 Given that it is not apparent either from the wording of paragraphs 1(b) and 5 of Article 8 ... or from the case-law of the Court of Justice that the concept of similarity has a different meaning in each of those paragraphs, it follows, inter alia, that, if, in examining the conditions for the application of Article 8(1)(b) of that regulation, the General Court concludes that there is no similarity between the signs at issue, paragraph 5 of Article 8 also necessarily does not apply to the case in point. Conversely, if the General Court takes the view, in the context of that same examination, that there is some similarity between the signs at issue, such a finding is equally valid with regard to the application of both Article 8(1)(b) and Article 8(5) ...
40 However, in a situation in which the degree of similarity in question does not prove to be sufficient to result in the application of Article 8(1)(b) ... it cannot be deduced from that that the application of paragraph 5 of that article is necessarily precluded.
41 The degree of similarity between the signs at issue required by each of the paragraphs of that provision is different. Whereas the application of Article 8(1)(b) ... is conditional on a finding of a degree of similarity between those signs which is capable of giving rise to a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood of confusion is not, by contrast, necessary as a condition for the application of paragraph 5 of that article.
42 Since Article 8(5) ... merely requires the similarity which exists to be capable of leading the relevant public to make a connection between the signs at issue, that is to say, to establish a link between them, but does not require that similarity to be capable of leading that public to confuse those signs, it must be held that the protection which that provision lays down in favour of marks with a reputation may apply even if there is a lower degree of similarity between the signs at issue (C-603/14, paras 39-42, emphasis added).
The general framework seems conceptually clear, and there is an internal logic that excludes protection under either Art 8(1)(b) or Art 8(5) CTR where the existing and the new trade marks are not similar. The problems and difficulties come in the application of this framework.
In the case at hand, the core of the question relied on the General Court's (GC) assessment of the existence of any similarity between 'El Corte Inglés' and 'The English Cut'. One of the compounded difficulties in the assessment is that the GC's Judgment is only available in French and Spanish, which complicates matters. In the CJEU's (English) account,
45 ... it must be pointed out that, when it examined the conditions for the application of Article 8(1)(b) ..., the General Court held, in paragraph 29 of the judgment under appeal, that there was a low degree of conceptual similarity between the signs at issue. However, in paragraph 33 of that judgment, it took the view that, in the light of the absence of any visual and phonetic similarity, it had been rightly found in the contested decision that those signs were different overall. Consequently, the General Court held that, as one of the cumulative conditions for the application of Article 8(1)(b) was not satisfied, there was no need to carry out a global assessment of the likelihood of confusion.
46 However, as regards the assessment of the conditions for the application of Article 8(5) ..., the General Court stated, in paragraph 39 of the judgment under appeal, that it was apparent from the comparison of the signs at issue, which was carried out in the context of paragraph 1(b) of that article, that those signs were not similar and therefore that the conditions for the application of paragraph 5 of that article were not satisfied.
47 In ruling to that effect, the General Court erred in law (sic). That Court could not disregard its own finding, in paragraph 29 of the judgment under appeal, that there was a conceptual similarity between the signs at issue.
48 In those circumstances, the General Court should have examined whether that degree of similarity, albeit low, was not sufficient, on account of the presence of other relevant factors such as the renown or reputation of the earlier mark, for the relevant public to establish a link between those signs, for the purpose of Article 8(5) (C-603/14, paras 45-48, emphasis added).
Frankly, upon reading these passages, I have the feeling that the CJEU is screaming 'gotcha' in the background. Firstly, it seems clear to me that the GC could not have erred in law by failing to take into account its own factual findings. When the GC stressed in para 39 that 'those signs were not similar', it was clearly making a (factual) reference to a previous factual assessment. Thus, if anything, the GC could have erred in fact. But, even then, it is hard to see why the CJEU engages in such a tricky reconstruction of the facts as found by the GC and their interpretation. It seems clear to me that, in paragraphs 29 and 33, the GC carried out the assessment of whether similarity existed for the purposes of Art 8(1)(b) protection. On this point, the GC could only reach two conclusions. Either there was similarity and an assessment of the likelihood of confusion was engaged. Or, conversely, there was no similarity and thus there was no need to proceed to such assessment.
At this stage, it is important to go back to the original GC Judgment rather than relying on the stylized summary that the CJEU provides. Quite clearly, in para 29 of its Judgment, the GC indicated that 'the signs at issue have a weak conceptual similarity requiring proper prior translation, not a strong conceptual identity' (own translation from Spanish and French). And in para 33, it indicated that 'there is a slight conceptual similarity, but no visual and phonetic similarity between the conflicting signs. It follows that the Board of Appeal correctly concluded that the signs were different overall' (own translation from Spanish and French).
Now, it must be acknowledged that the GC could have been clearer. Its (corteous?/naive?) deference to the point that, upon proper prior translation, there was a weak conceptual similarity between the signs, but that the signs were different overall is open to (re)interpretation. Was there some similarity or not? However, the natural and systematic interpretation of what paragraph 33 means needs to be found in the GC's Judgment itself.
In para 39, it is clearly stated that 'it nevertheless follows from the comparison between the conflicting signs, that they are not similar' (own translation from Spanish and French, emphasis added). By ignoring this statement and the weight it must be given as authetic interpretation of what the GC meant in the same Judgment, only some 10 or 6 paragraphs earlier, the CJEU engages in an exercise of semantics that certainly does not contribute to conceptual clarity. More importantly, the CJEU also fails to recognise the difficulty of carrying simultaneously a conceptual and linguistic comparison, given that concept and language are, if not impossible, certainly hard to disentangle [or is it only when humour is concerned; see G Ritchie, The Linguistic Analysis of Jokes, vol. 2 Routledge Studies in Linguistics (London, Routledge, 2004) 28 and ff]. Are we doomed to remain lost in translation?
