On September 22, 2017, the General Court of the European Union (ECG) rendered a judgment in which it assessed how a certain segment of EU consumers will perceive the word element of an EU trade mark (EUTM) that is not in their native language. T-586/15, ECLI:EU:T:2017:643.
Nara Tekstil Sanayi Ve Ticaret Anonim Sirketi filed an EUTM application for the figurative sign
for goods and services in International Classes 18, 25, and 35. NBC Fourth Realty Corp. opposed the application on the basis of, among other issues, a Bulgarian national registration for MAXX covering the same classes. The EUIPO’s Opposition Division upheld the opposition and the applicant took the case before EUIPO’s Boards of Appeal (BoA). The Fourth BoA dismissed the appeal, confirming that the signs were visually and phonetically similar and that there was a likelihood of confusion. The BoA also considered that, since the signs had no conceptual meaning for Bulgarian consumers, the conceptual comparison between the marks was neutral for the outcome of the case.
The applicant sought the annulment of the BoA’s decision before the EGC, arguing in part that the term “maxx” had a laudatory connotation and a very low degree of distinctiveness from the point of view of Bulgarian consumers. Therefore, the distinctive element “Nara” was sufficient for the public to identify the origin of the goods and services, according to the applicant.
The court concurred with the BoA’s finding that, since the application was opposed on the basis of a national Bulgarian registration, likelihood of confusion should be assessed from the point of view of the public at large in Bulgaria. Despite being presented with a decision of the Bulgarian Patent Office, finding that the term “maxx” is perceived by Bulgarians as an abbreviation of “maximum,” the court held that the term “maxx” does not exist in Bulgarian, which uses the Cyrillic alphabet, and that the Bulgarian word for “maximum” is “максимален,” which is not apparently similar to “maxx.” Moreover, the term “maxx” has a notable double “x,” which is very unusual for the relevant public in Bulgaria. Consequently, for the relevant Bulgarian public, the terms “maxx” and “Nara” were found to be equally distinctive, and since the mark shared a common distinctive element with the Bulgarian mark MAXX, that led to likelihood of confusion, held the court.
The case demonstrates how the multiplicity of languages in the EU, which the EUTM system has to accommodate, presents certain challenges in assessing consumers’ perceptions in different European countries. The decision at hand establishes a low threshold for finding distinctiveness of the term “maxx” from the point of view of the Bulgarian public. As the word is in a non-native alphabet for Bulgarians and it is misspelled, this was deemed sufficient to conceal its possible descriptive meaning for the relevant public. These factors, which largely assessed visual perception of the sign, sufficed to outweigh any etymological or phonetical considerations, into which the court did not delve.
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