With judgment of June 18, 2020, the Court of Justice of the European Union (CJEU) confirmed that in case of two conflicting trademarks, if the earlier trade mark has even weakly distinctive elements, often there is no likelihood of confusion.

earlier trade mark

In this case (C-702/18 P, Primart vs. Bolton Cile), the defendant – Bolton Cile España, filed a notice of opposition against the EUTM “PRIMART”, based on the earlier Spanish trade mark “PRIMA”. The EUIPO’s Board of Appeal upheld the opposition and refused the trade mark application on the basis that “there was a likelihood of confusion on the part of the relevant public.”. The General Court of the European Union confirmed the decision.          

However, the CJEU found that the General Court made an error of law, because likelihood of confusion between the mark applied for and the earlier one should be based on more than one of the several factors, relevant for finding likelihood of confusion. In that regard, the CJEU reminds that “… the global assessment of the likelihood of confusion must take into account all factors relevant to the circumstances of the case, including the distinctive character of the earlier mark.”

It is apparent that, the General Court hadn’t regarded the appellants arguments, related to the weak distinctive character of the earlier trade mark. Furthermore, the Court found the arguments inadmissible and reached the same judgement as EUIPOs Board of Appeal. The outcome would be different, if the Court considered all the facts, as it is said in paragraph 52 of the CJEU’s judgement:

Consequently, it cannot be ruled out that, in the present case, the General Court would have reached a different conclusion to that reached in the judgment under appeal if it had regarded the appellants arguments relating to the weak distinctive character of the earlier mark as admissible. In particular, in such a situation, it could have accepted those arguments and, consequently, found that there was no likelihood of confusion.”

In conclusion, as it follows from the above, the CJEU set aside the judgement of the General Court.

Thus, in many cases, an earlier trade mark can provide protection to its non-distinctive elements, which is good news for the European trademark community.

Author: Temenuga Dimova