Author: Claudio Balboni

It  was with sadness, albeit not extreme, but sadness nonetheless, that I  read the following  passage of the General Court ’s ruling T-490/22 of 11 October 2023: “the applicant’s argument that the earlier mark, as a word mark, enjoys protection in all fonts […] cannot succeed”, “A word mark is a mark consisting entirely of letters, of words or of groups of words, written in printed characters in normal font”, “The graphic form which the earlier word sign might have in the future must not, therefore, be taken into account for the purposes of the examination of similarity.” (at §52)

This  holding refers to a principle dating back to at least 2005 (cf. T-211/03, of April 20, 2005 , ‘Faber-NABER’,  at §36 and T- 29/04 of December 8, 2005 Cristal Castelblanch, at § 57) and cited more than once by the Court itself (T-353/04, of 13/02/2007, ‘CURON-EURON’, point 74; T-434/07, of 2/12/2009, ‘Solvo-VOLVO’, point 37): nothing new under the sun, therefore, except that I cannot still quite accept the principles being restated.

I have always believed that a word mark is the ‘strongest’ type of trademark one could recommend to a client and the Court have recognized that a word mark gives the owner the right to reproduce it in any shape, size or colour ( cf. judgment of 16 September 2013, Müller-Boré & Partner v OHIM — Popp and Others (MBP), T-338/09, not published, at §54) and that consequently it would allow its holder to challenge other subjects who adopt a similar mark in terms of wording, but reproduced in a specific font.

Thus, it has always seemed to me entirely reasonable to argue that by registering a word mark, one might obtain protection regardless on the graphical appearance a later mark might have.

I am heartened to observe that I am not the only one to take this stance, indeed all the defence arguments that have been laid before the Court on this aspect since 2005 have supported the same thesis. And the former OHIM (now EUIPO) seems to have done so too[1].

However, the CJEU continues to hold the contrary view.

What bothers me in most, is the fact that the above mentions holding introduces parameters conducive to limiting the scope of protection of word marks that are subjective in the extreme: indeed, it will be up to whoever interprets them to distinguish the “normal font” from the abnormal font.

The ruling was rendered in the dispute concerning the conflicting AJONA word mark and the AYUNA figurative mark, the former protecting ‘toothpastes’ and the latter protecting a range of other cosmetic products. In the dispute in question, the Court was of the opinion that the holder of the earlier word mark could not challenge the later figurative mark.

Without delving into the merits of all the steps that led the Court to state that there was no risk of confusion, I would like to focus on the mere statement that a word mark is protected only against marks reproduced in a “normal font”.

In my opinion since it is not a priori ascertainable what font a certain judge will deem “normal,” there is a real risk that the use of a subjective criterion could turn into an absolute discretion of the judge, whereas, on the contrary there would be a need for clear, objective and easily interpretable criteria.

 I thus believe that another approach should be followed. To understand what, in my humble opinion, this approach should be, the starting point is a Court ruling that made history: SABEL – Puma of 1997 (C-251/95, of 11/11/1997).

In this ruling, as we all know, visual, phonetic and conceptual analyses are the basis of the assessment of the likelihood of confusion between two trademarks (ibidem at §23).

However, the Court did not go as far as stating that any one of the three aspects should carry more weight than the others.

Nevertheless, in my opinion, in the real world the three aspects do not carry the same weight: and I dare say that this, in general, applies to any product or service one considers.

I presume that a neuroscientist may state that the phonetical aspect is the only one that allows the consumer to be both a passive part (the consumer hears or reads the trademark that is uttered to them) and an active part (the consumer can in their turn write or utter the trademark) in the chain of communication. However, when the visual and conceptual aspects of the active communication channel are totally absent, in relation to these two aspects the user is always and only a passive party: indeed, the consumer can only see or conjecture what the trademark represents or communicates to them, but they cannot in their turn convey these images or concepts except by translating them verbally (i.e. using a worded element). Therefore, at least from a merely statistical point of view, the phonetic channel, which is strictly connected to the wording part of the trademark, should be worth twice as much as the visual channel.

And this, it should be carefully noted, is true regardless of whether the word element is written in a ‘normal’ way (T-490/22 point 52) or in a particular graphic way: a fact that should help us dispel the fog of subjectivity in which the judges have cast us. Indeed, even if the word element of a figurative mark is written with very particular fonts and graphic tricks, as long as the consumer is able to read something in that sign, that something will weigh enormously more than its visual or conceptual aspect. In other words, in my opinion, it is enough to be able to read something in a figurative sign, and that which can be read must necessarily prevail over the graphic aspect.

I realise that the remark made above (i.e. that verbal communication has a dual channel – active and passive – while visual and conceptual communication can only be used passively), could be open to criticism, in that what matters is how the consumer perceives the trademark, and consequently one might argue that the only channel that is useful for our purposes is the passive one, and therefore, since this channel has all three aspects, there would be no reason to ascribe a higher value to the word element.

In actual fact, while it is true that a mark is generally considered to make an immediate impression on the consumer, it is also true that it is not clear why no consideration should be given to the subsequent circulation that the sign could (and does) have, since this also evidently affects the risk of confusion. Indeed, one also ought to note that a trademark ‘circulates’ after the first time the consumer has seen it, consequently there is no reason to deny primacy to the word element contained in each trademark.

This is further confirmed by the regulatory framework: Directive 2015/2436 and Regulation 2017/1001 refer to “risk of confusion for the public” and not just for the first consumer who comes into contact with the trademark: a concept that appears to support the above position.

For these reasons, I believe that the presence of a word element(s) in a trademark should be considered crucial.

In addition, it is worth considering that nowadays, the digital world should not be overlooked. Many of us spend at least one third of our day (the working hours) in front of a PC, and after that we spend a sizable portion of our waking hours staring at a device connected to the Internet. And that applies to younger people as well as adults, although unarguably to a different extent. Public administrations, including many trademark offices, are becoming digitalised – and some even boast of being paperless and not accepting any communication channels other than digital. Most of our private operations are carried out with the help of smartphones: from chatting with friends to managing our finances. And so on and so forth.

But in the online world, while it is true that the visual and conceptual aspects of trademarks also play a significant role, one still needs to consider that we are always required to write or utter something to be able to operate a device.

The member of the EUIPO Boards of Appeal, André Pohlmann (in the article “The roar of a toothless tiger?” published in the EUIPO Newsletter of December 11, 2023), has already pointed out that “Products currently purchased on sight in a supermarket or on the internet will soon be able to be ordered by voice with the help of AI-powered virtual assistants («Alexa», «Siri» etc.). Furthermore, the purchase of products may be the direct result of oral communication (for example, a product recommendation by an employee or a loudspeaker announcement in a supermarket). In these situations, the phonetic perception of the mark can play a crucial role, also for products that are normally purchased on sight”.

But this remark is limiting if we consider that:

  • the word element of the trademark (even one created in the most ‘abnormal’ font possible) must be typed in an online search engine to be able to search for the product or service;
  • only the word part of a trademark (even that of a trademark with the most imaginative font) may constitute an internet domain, which by its nature is reproduced in a ‘normal’ font (as the Court would say);
  • only the word part of a figurative mark (even if bizarre) can constitute the search key for the relevant product or service on any marketplace;
  • the word part only of a figurative trademark (even if almost illegible) may constitute the name of a social media profile where the product or service characterised by the trademark is advertised;

and I’ll stop here, but I am convinced that there are a number of other cases where consumers are required to write or utter a trademark if they want to ‘interact’ with the trademarked product or service and that, consequently, it seems undeniable to me that when a trademark has a word element, the latter cannot be on a par with the visual aspect.

One should add that, although conceptually speaking it is quite clear that a merely figurative element can convey important messages, when the holder wishes to circulate a figurative mark, oftentimes this must be identified with a name. Indeed, if we want to search online for a merely figurative mark, considering that – to date – image searches are not very effective, we would necessarily have to use the word element that the holder uses to identify it.

To underline the significance of the word aspect of a mark, let us also think of visually or hearing-impaired consumers. A person who cannot see can only hear and/or utter a mark. A person who cannot hear can see it, but if they wish to communicate it they are forced to write or utter it. And we always come back to that point: the verbal aspect, connected to the presence of a word element, weighs enormously more than the visual aspect.

Which is why, if the Courts want to interpret what happens in reality and remove useless subjectivism, they should strength the scope of protection of word marks, extending it against any figurative mark which, even in the meanders of its bizarre graphic forms, still contains a verbal element which is confusingly similar.

[1] Ruling T-211/03, point 36 reads, “On the other hand, OHIM appears to confer a graphic element on the word mark which, by definition, it does not have. In addition, OHIM adopts a truncated approach by justifying the protection conferred on the earlier word mark by its capacity to imitate, in the future, the particular form of the complex mark applied for.