On May 21st, 2015 the General Court of the EU laid down some key issues on the assessment of the likelihood of confusion between “position marks”, meaning those figurative marks that are registered with the indication of the specific position where the mark is displayed on a certain good (full text here).
Case T-145/14, Adidas AG v. OHIM, concerned the application for registration, by Belgian Shoe Branding Europe BVBA, of a “position mark” for “footwear”, consisting in two parallel lines placed on the side of a shoe, similar to the famous Adidas’ “three stripes”, though differing in number and inclination. Adidas AG filed a notice of opposition, based on its earlier rights.
Both the Opposition Division and the Board of Appeal of the OHIM rejected Adidas’ opposition.
However, the General Court annulled the decision of the Board of Appeal, ruling that: 1) the marks at issue have more common elements than differences; 2) the average consumer of that kind of products does not demonstrate a high degree of attention, normally perceiving a mark as a whole and not proceeding to analyse its various details, so that the overall impression produced by the two marks is that of similarity; 3) a mark bearing similar characteristics to those of a highly distinctive mark with a strong reputation may mislead the public into believing that the goods come from the same undertaking.
One of the key issues of the commented case is defining the degree of attention of the average consumer when he prepares and makes his choice between different products. In fact, while on one hand the Board of Appeal stated that the average consumer is accustomed to seeing geometric designs on shoes and pays attention to the details of “sport shoes”, on the other hand the General Court judged that, since “sport shoes” are everyday consumer goods, the relevant public is made of the average consumer with an average degree of attention. The Board of Appeal was probably right, because consumers, when purchasing “sport shoes”, usually seek good quality, solid and technical shoes, with specific features and produced by a trusted mark, hence applying a medium / high degree of attention.
It must also be pointed out that, despite what the General Court stated in this decision, previous EU decisions have admitted that the more famous a mark is, the more likely the average public will notice even the smaller differences; because it knows the trade mark in almost every detail and, therefore, can more easily recognize and distinguish imitations, so that the risk of confusion/connection between the signs is more difficult to occur (see Claude Ruiz-Picasso and Others v. OHIM, T-185/02, 22 June 2004, confirmed by C-361/04, 12 January 2006; on the renowned mark see also Court of Bologna, 20 October 2011, in GADI, 2013, n. 5954, p. 264 ss.).
General Court of the EU (EGC), Adidas AG v. Office for Harmonisation in the Internal Market, 21 May 2015, Case T-145/14