BACKGROUND OF THE CASE

On 3 of May 2018, Ms Isaline Grangé and Ms Alizeé Van Strydonck filed an EUTM application for the word sign “âme”, for Classes 18 and 25. On the 21 August 2018 Nema Srl filed a notice of opposition based on the figurative trade mark “AMEN”, which was already registered in goods for the same Classes. The opposition was relied on grounds of Art.8.1(b) of the European Union Trade Mark Regulation.

The Opposition was rejected by the Opposition Division on 25 October 2019. Subsequently, an Appeal was filed by Nema. On June 2020 the Fourth Board of Appeal annulled the prior decision and found that there was an existing likelihood of confusion between the concerned trademarks. An action before the General Court was then filed challenging the Office´ s position on the outcome of the opposition.

DECISION OF THE GENERAL COURT

In its ruling, the General Court decides on whether the marks are visual and phonetically similar to an average degree as well as if the conceptual comparison made by the Board of Appeal was correct in not considering the meaning of the word “amen” and whether the case law was properly applied when weighing the similarities of the marks in the global assessment.

Regarding the visual comparison, the General Court agreed with the Board of Appeal insofar as the signs are visually similar. Both marks are composed by the same first three letters, being the only difference the last letter “n” in the earlier trade mark, as well as the circumflex accent in the first letter of the opposed mark. Regarding the phonetical comparison, it is true that in French the word “âme” would be pronounced different from “amen”, but for the relevant public, the pronunciation would be the same with a two-syllabus word.

In relation to the conceptual comparison, the General Court understands that the Board erred in considering that the word “amen” lacks of any meaning by itself. The General Court stated that it is a word that would be regarded all over the European Union as referring to a prayer in a very direct and clear manner. So, the Board of Appeal was wrong in stating that no conceptual comparison could be made. On the other hand, the mark “âme” is considered no to carry any meaning. For this reasons, as only one of the marks evokes a concept, the General Court found that the marks at issue were not conceptually similar.

When conducting the global assessment, the General Court found that the Board of Appeal was wrong when claiming that the lack of meaning cannot overweight visual and phonetic similarity. According to the case-law, the global assessment of the signs implies that conceptual differences may counteract phonetic and visual similarities, provided that at least one of the signs has a clear and specific meaning for the relevant public, being capable of grasping it immediately.

In conclusion, the General Court found that in the present case there was no likelihood of confusion between the marks at stake and the Board of Appeal was wrong in concluding that the visual and phonetical similarities could not be countered by the conceptual dissimilarities of the marks.

Judgement of the General Court, case T – 442/20 dated 5 May 2021