March 15, 2019
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EUROPEAN UNION: General Court Annuls Decision Wrongly Assessing the Issue of Similarity
The General Court of the European Union (GC) assessed in its decision of October 15, 2018, T-164/17 – Pink Lady, the issue of similarity between the WILD PINK sign and the earlier PINK LADY word/figurative trademark for goods in Classes 29, 30, and 31. The GC annulled the decision of the Fourth Board of Appeal (BoA), which had denied similarity.
The Australian proprietor of the PINK LADY trademarks opposed the registration of the WILD PINK word mark for various goods, including, among others, apples, which had been applied for by Pink Lady America LLC. Both the Opposition Division and BoA rejected the opposition by denying any confusing similarity between the marks.
The GC confirmed the BoA’s view that the term “pink”—a basic English word like the terms “blue” and “red”—is understood by the general public. It further held that the assessment of whether the word “pink” was descriptive must include all relevant goods which may be pink in color (for example, raspberries), since the PINK LADY marks were registered for fruits in general.
The GC stressed that a descriptive element of a mark has to be considered in the overall impression produced by the mark if the other elements do not dominate. Denying this for the signs at issue and considering their equal number of word elements as well as the number of letters, the GC affirmed a low degree of visual and phonetic similarity.
As to conceptual similarity, the GC held that the expression “pink lady” will be understood by the general public as referring to the concept of a “lady in pink.” The expression “wild pink” will be understood by the English-speaking public as referring to a kind of pink to be found in the wild, while the non-English-speaking public will not understand it and thus will perceive “pink” in both signs as denoting the color pink. Thus, the GC confirmed a low degree of conceptual similarity.
The GC stressed that the concept of similarity in Articles 8(1)(b) and 8(5) of EU Regulation No. 207/2009 is the same. Thus, once some similarity, even faint, between the signs at issue is found, Article 8(5) is applicable. The degree of similarity required under Article 8(1)(b) is different from that required under Article 8(5). For the application of Article 8(5), it is sufficient that the relevant public make a connection between these signs (that is, establishes a link between them).
In this case, an overall assessment must be carried out in order to ascertain whether, notwithstanding the low degree of similarity between the signs, there is a likelihood of confusion or a link between these marks due to other relevant factors, such as the reputation of the earlier mark.
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