Judgment of the Court of Justice of June 11, 2020 (C-115/19 P)
On October 14, 2014, CHINA CONSTRUCTION BANK CORP. applied for the figurative European Union trademark Fig.1 in class 36. The French entity GROUPEMENT DE CARTES BANCAIRES filed an opposition on the basis of the figurative European Union trademark Fig.2 of class 36. The opposition was based on arts. 8.1. b) and 8.5 EMR.
Fig.2 
The Opposition Division upheld the same, applying only art. 8.1. b) EMR. The applicant's subsequent appeal was dismissed by resolution of June 14, 2017 (R-2265/2016/1). The EUIPO Board of Appeal mainly took into account the reputation of the CB mark in France and considered that, at least in France, there was a risk of confusion between the opposing trademarks. Based on such circumstances, he maintained the denial of the CCB figurative mark applying art. 8.1. b) EUMR.
The appeal before the General Court (TG) was dismissed by ruling of December 6, 2018 (T-665 / 17). It is interesting to note that the TG reiterates the high distinctive character of the earlier CB trademark in France in relation to “bank cards”. Furthermore, it took such reputation into account when evaluating the similarity between the distinctive marks of the disputed marks. Finally, the TG expanded the recognition of such renown to the following services that it considered a general category: financial business, monetary business, banking business.
In its appeal, CHINA CONSTRUCTION BANK CORP. He pointed out, among others and as a first reason, that the TG had made an error of law when taking into consideration, in the phase of its examination consisting of assessing the similarity between the signs in conflict, the reputation of the earlier mark, and at the same time to take such renown into consideration again in the overall assessment of the risk of confusion, which is why the GC twice took into account the high distinctive character of the earlier mark. Furthermore, it alleged a lack of reasons and, in particular, that the GC had not given reasons because it had declared that the earlier mark enjoyed a reputation and therefore had a high distinctive character with regard to financial businesses, monetary businesses and banking business; She also criticized that the TG ruling had not explained the reasons why the evidence of use of the earlier mark, which specifically referred to payment cards, could justify such a general conclusion.
The CJ in the ruling of June 11, 2020 (C-115/19) admits both reasons and annuls both the ruling of the TG and the resolution of the EUIPO Board of Appeal. In this brief comment we will focus on the analysis of the first reason and, particularly, on the role played by the high distinctive character or reputation of the previous trademark when applying art. 8.1. b) EMR.
As is known, this article requires for its application the cumulative concurrence of the following three circumstances: a) Identity or similarity between the signs that make up the trademarks in dispute; b) Identity or similarity between the products and/or services distinguished by the respective brands; c) that the concurrence of the above circumstances leads the public to believe that the products or services to which the previous mark refers and those to which the applied for mark refers come from the same company or, where applicable, from economically linked companies; that is, direct risk of confusion or indirect risk of confusion (risk of association).
Well, the CJ clarifies in the ruling that we are commenting on that the “renown or high distinctive character of the earlier mark cannot be taken into account when examining the similarity between the distinctive features that make up the disputed marks since - contrary to the factor of the similarity between the signs in conflict - that of the reputation and distinctive character of the earlier mark does not imply a comparison between several signs, but refers only to a single sign; namely, the one that the opponent has registered as a trademark. Since these two factors therefore have a fundamentally different scope, examination of one of them does not allow conclusions to be drawn regarding the other. Even in the event that the earlier mark has a high distinctive character due to its reputation, this circumstance does not allow it to be determined whether said mark is similar to the mark applied for on a visual, phonetic and conceptual level and, in the event that it is similar , to what degree it is.”
Indeed, the examination of the similarity of the signs in conflict consists of a visual, phonetic and conceptual comparison based on the overall impression that such signs leave in the memory of the relevant public, taking into account their intrinsic qualities. It can be stated that the examination of the similarity of the signs referred to in the first of the factors necessary to apply art. 8.1. b) EUMR must follow fundamentally objective criteria (dominant element, vowel scale...) which, in addition, are predetermined by all the elements that make up the disputed marks, as they appear in the Trademark Registry. In no way can the reputation or high distinctive character of the previous trademark influence this comparative examination.
A different issue is the influence of the reputation of the previous trademark when analyzing the third of the cumulative circumstances required by art. 8.1. b) EUMR referring to the existence of a risk of confusion or association, since it is possible that such a risk is more feasible if the earlier mark has a reputation or a high distinctive character. In other words, reputation may justify extreme comparative rigor when assessing whether there is a risk of confusion or association between the opposing trademarks, but such rigor cannot be used in the prior and necessary factor of the existence or not of similarity between the trademarks.
In any case - and finally - it cannot be ignored that in those cases where there is some degree of objective similarity between the trademarks but this is not sufficient to generate a risk of confusion or association in the public that makes the application of the art. 8.1.b EMR, it might still be possible to invoke art. 8.5 EMR if the circumstances that such provision requires for its application arise. In this regard, we must remember that according to abundant jurisprudence, the degree of similarity between the opposing signs, required to apply art. 8.5 EMR, is less than that of art. 8.1. b) EMR. And, on the other hand, the existence of the generation of a link between both brands established by art. 8.5 EMR is, also according to European jurisprudence, easier to occur the greater the reputation of the earlier trademark.
Author Jesus Gomez Montero Former Partner of ELZABURU and Member of the Advisory Committee of the Alberto Elzaburu Foundation
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