Likelihood of confusion is based on the relevant public’s understanding, rules EU General Court

By Florence Chapin,
plusieurs portes de couleur

In December 2022, the EU General Court discussed the assessment of the likelihood of confusion in the context of the dispute between the holders of the ‘Well and Well’ and ‘WellBe Pharmaceuticals’ trademarks. Florence Chapin sets out its conclusions.

In Pharmadom v European Union Intellectual Property Office (EUIPO), the General Court discussed the assessment of the likelihood of confusion in the light of the understanding that the relevant public may have of the conflicting marks.

In brief:

  • The Board of Appeal dismissed an opposition against ‘WellBe Pharmaceuticals’ based on the earlier mark ‘Well and Well’, both covering identical goods/services. 
  • The court confirmed that ‘well’ would be understood by at least part of the relevant public as meaning ‘good’ and as referring to the concept of ‘wellbeing’. 
  • The Board of Appeal had not made any error of assessment in finding that there was no likelihood of confusion. 

Background to the ruling 

On 26 September 2017, Wellbe Pharmaceuticals SA filed an application for registration of an EU trademark with the EUIPO in respect of the below figurative sign, covering Classes 3, 5, 10, 35 and 42: 

WellBe Pharmaceuticals logo

On 26 December 2018, Pharmadom, owner of the prior French trademark ‘Well and Well’, also covering Classes 3, 5, 10, 35 and 44, filed an opposition against the application. On 11 May 2020, the Opposition Division partially upheld the opposition, recognising the likelihood of confusion between certain goods in Classes 3, 5 and 10 and certain services in Classes 35 and 42. Wellbe filed a notice of appeal against the decision of the Opposition Division. 

The Board of Appeal upheld the appeal on the ground that there was no likelihood of confusion, even though all the goods and services at issue were identical. In order to reach that conclusion, it found that: 

  • the earlier mark had, as a whole, only an average degree of inherent distinctiveness; 
  • there was only a below-average degree of visual and phonetic similarity between the signs at issue; and 
  • the signs were not conceptually comparable except for the part of the relevant public for which they were similar. 

Considering the above, Pharmadom claimed that the General Court should annul the board’s decision. 

Appeal to the General Court 

Given the date on which the application for registration at issue was filed (ie, 26 September 2017), which is decisive for the purposes of identifying the applicable substantive law, the facts of the case were governed by the substantive provisions of Regulation 207/2009. 

Pharmadom submitted, in essence, that, contrary to what the Board of Appeal had found, the word element ‘well’ had an average degree of distinctiveness, even though that word element was capable of being understood by part of the relevant public. It argued that knowledge of a foreign language cannot be presumed, unless the word is very basic and commonly used by the relevant public. Accordingly, Pharmadom claimed that that word was meaningless for a substantial part of the relevant public and, therefore, had an average degree of distinctiveness. It further submitted that the repetition of the word ‘well’ in the earlier mark increased its distinctiveness. 

In addition, Pharmadom argued that the Board of Appeal had erred in finding that the relevant public perceived the mark as a whole: the board should have found that the relevant public would split the mark applied for into ‘well’ and ‘be’, as the word element ‘well’ is distinctive. Consequently, it claimed that there were similarities between that mark and the earlier mark, which also contains the word ‘well’.

Surprisingly, the Board of Appeal had found that, for reasons of procedural economy, it was not necessary to compare the goods and services at issue, but that it was possible to base its reasoning on the basis that those goods and services were identical. 

In comparing the signs, the Board of Appeal had found that the word element ‘well’ had a low degree of distinctiveness for the part of the relevant public which would understand it as meaning ‘good’ or as a reference to the concept of ‘wellbeing’. It took the view that that word was descriptive with regard to the goods and services at issue. The board had found that, for the relevant public which did not understand English, that word element had an average degree of distinctiveness. The earlier mark, taken as a whole, thus had an average degree of distinctiveness for the whole of the relevant public. 

In these circumstances, the Board of Appeal had recalled established case law holding that, where the signs consist both of word and figurative elements, in principle, the word element of the sign usually has a stronger impact on the consumer than the figurative element, since the public does not tend to analyse the signs and will more readily refer to the goods or services in question by citing the name than by describing the figurative element of the trademark. Although, according to this case law, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them. 

The Board of Appeal had also recalled the legal approach of the General Court whereby a relevant public consisting of health professionals is able to understand the meaning of the word ‘well’ since those professionals have, in general, a good knowledge of English and can, in any event, easily understand the meaning of certain words which are very common in everyday language. 

The Board of Appeal had then considered that, for the part of the relevant public which would understand the meaning of the word element ‘well’, that element would have a low degree of distinctiveness, whereas, for the public which did not understand English, it would have an average degree of distinctiveness. 

When assessing likelihood of confusion, the relevant public matters

The General Court found that the Board of Appeal’s findings should be upheld, since the word element ‘well’ will be understood by at least part of the relevant public as an English word meaning ‘good’ and as referring to the concept of ‘wellbeing’. Accordingly, the word element ‘well’, as regards the part of the public which understands its meaning in English, had a low degree of distinctiveness with regard to the goods and services which are connected to a person’s physical wellbeing. 

The Board of Appeal had therefore focused its analysis on the common 'well' element and disregarded the elements that had a weaker distinctive character, the likelihood of confusion being assessed in relation to the distinctive and dominant elements. 

The Board of Appeal had concluded that there was a likelihood of confusion between the conflicting signs by holding that, even though the signs at issue had a string of letters in common, those letters were not sufficient to justify the finding of a likelihood of confusion, even for the public which displayed an average level of attention in relation to some of the goods at issue. The Board of Appeal drew those conclusions by taking into account the low degree of visual and phonetic similarity and the fact that the signs at issue did not share any conceptual similarity, except for part of the relevant public – namely, the part which would grasp the meaning of the word element ‘well’ in both signs. Consequently, it had ruled out any likelihood of confusion with regard to all the goods and services covered by the marks at issue which had been found to be identical and with regard to the whole of the relevant public, including the relevant public which did not understand the meaning of the word element ‘well’. 

The Court agreed with the arguments of the Board of Appeal and rejected Pharmadom's appeal, finding that there was no likelihood of confusion between the signs. 

While the decision was ultimately based on established case law, one may question the initial reasoning behind the opposition decision. 

This article first appeared in WTR Daily, part of World Trademark Review, in January 2023. For further information, please go to www.worldtrademarkreview.com.

Florence Chapin is a French and European Trademark Attorney in Novagraaf’s Bordeaux office. 

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