EGC: Likelihood of confusion between figurative mark ‘cushe’ and earlier ‘she’ marks

The General Court (EGC) held that as the marks were phonetically identical and visually and conceptually similar they should be regarded as similar overall. Followed from this it was held that the mark at issue could be perceived by the relevant public as originating from the same undertaking or undertakings economically linked to the earlier word mark. The EGC upheld the invalidity action and found that there was likelihood of confusion (Judgment dated 15 October 2015; Case T‑642/13). Background of the case and subject matter On 10 October 2005 the applicant, Wolverine International LP, obtained an international registration designating the European Community for the figurative mark ‘cushe’ (No.  859087): The mark was registered in Class 25 of the Nice Agreement for the goods ‘clothing, footwear and headgear’. On 20 September 2010 BH Store BV filed a request for a declaration of invalidity against the mark based on the following earlier trademarks:

• the word mark SHE, registered on 8 November 2000 in Germany (No. 39975501) for the goods in Class 25: ‘clothing, footwear and headgear’;
• the figurative mark ‘SHE’, registered on 25 April 2000 in Germany (No. 30018423) for goods included in Classes 3, 9, 16, 18 and 25 and reproduced below:

• the figurative mark ‘SHE’, registered on 15 January 2000 in Germany (No. 39726287) for goods in Classes 3 and 25, identical to the mark reproduced above.

The Cancellation Division rejected the request for a declaration of invalidity. It held that even though the goods at issue were identical, there was no likelihood of confusion. BH Store BV filed a notice of appeal with OHIM. The Board of Appeal (BoA) of OHIM annulled the decision of the Cancellation Division. The BoA considered the goods at issue to be similar or identical. It found that the marks were phonetically identical and visually and conceptually similar and that the earlier word mark had a low degree of distinctive character. Therefore, the BoA found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Decision of the EGC The EGC upheld the BoA’s decision. In its appeal to the EGC, Wolverine International LP claimed firstly that the BoA erred in taking the view that BH Store BV had proved that the earlier word mark had been put to genuine use. Secondly, Wolverine International LP claimed that the BoA committed errors in its analysis of the level of attention of the relevant public, in the analysis of the similarity between the marks and in the examination of the descriptive nature of the earlier word mark. The EGC rejected the first claim holding that the BoA was entitled to find that BH Store BV had provided evidence that the earlier word mark had been put to genuine use. For the second claim, the EGC held that the goods at issue are everyday consumer goods, and the BoA was correct to find that the relevant public was made up of average German end consumers, who are reasonably observant and circumspect. For the similarity between the signs the EGC noted that according to the case law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. The assessment in relation to the visual, phonetic or conceptual similarity of the signs in question must be based on the overall impression given by the signs. In the present case the EGC found that the earlier word mark is composed of the word ‘she’ and that the sign at issue was perceived as the combination of the word element ‘she’ and a figurative element representing a curved line preceding it. Therefore, the BoA was entitled to consider the signs to be visually similar. For the phonetic similarity the EGC considered that the relevant public perceives the word element of the mark applied for as the element ‘she’, and not as the element ‘cushe’. Therefore, the signs were also phonetically identical. With regard to the conceptual analysis of the signs, the EGC confirmed the BoA’s assessment that the marks were similar because they shared the word ‘she’ and that the figurative element of the sign at issue neither changed nor neutralised the meaning of the word element. The EGC then concluded that so far as the marks at issue are phonetically identical and visually and conceptually similar, they should be regarded as similar overall. Lastly, the EGC held that because of the similarity of the signs at issue and the fact that the goods in question are identical or similar, the BoA was justified in finding that there was a likelihood of confusion between the marks at issue.