Olivier Mandel, French attorney-at-law, Managing partner of the French law firm Mandel & Associés
Introduction
Among the hundreds of thousands of trade marks filed each year before the European Union Intellectual Property Office (EUIPO), a tiny minority are composed of Chinese, Japanese or Korean ideograms.
It is even rarer for the EUIPO Board of Appeal to issue opposition decisions in cases opposing a registered EU trade mark composed of a word element written in Latin characters to an EU trade mark application composed of both verbal elements written in Latin characters and Chinese ideograms.
That is why we thought our readers might be interested in the decision that was issued on 24 October 2024 by the First Board of Appeal of the EUIPO.
The parties and the trademarks
By an application filed on 22 September 2022, Imperial Enterprises Holdings Limited, a company from Hong Kong, sought to register the mark
for the following list of goods:
Class 30: Pastries; Confectionery; Almond confectionery; Almond pastries; Danish pastries; Chocolate pastries; Fruit pastries; Biscuits; Crackers; Cookies; Almond cookies; Egg roll cookies; Egg rolls; Egg tarts; Cakes; Moon cakes; Bread; Baozi.
On 23 January 2023, DR. OETKER NV, a Belgian company, filed an opposition against the registration of the published trade mark application for all the above goods.
The opposition was based on the EUTM registration 16 673 329
filed on 3 May 2017 and registered on 14 October 2017 for the following goods:
Class 30 – Custard powder, Puddings in powder form, cake powder and cake paste; Flour, corn flour, prepared flour as preparation for dough; Yeast and Baking powder; Sugar, Vanilla and Vanilla (flavouring); Cake flavourings other than essential oils.
The opponent claimed that a likelihood of confusion exists between the two marks at issue.
The decision of the Opposition Division (first instance) of the EUIPO
By decision of 24 January 2024, the Opposition Division of the EUIPO partially upheld the opposition, namely for the following contested goods:
Class 30: Pastries; Confectionery; Almond confectionery; Almond pastries; Danish pastries; Chocolate pastries; Fruit pastries; Biscuits; Crackers; Cookies; Almond cookies; Cakes; Egg roll cookies; Moon cakes.
It gave, in particular, the following grounds for its decision:
The contested ‘Pastries; Confectionery; Almond confectionery; Almond pastries; Danish pastries; Chocolate pastries; Fruit pastries; Biscuits; Crackers; Cookies; Almond cookies; Cakes; Egg roll cookies; Moon cakes’ are similar to the opponent’s ‘cake powder’ and ‘cake paste’. These goods are similar as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition, because consumer can decide if they want to prepare the cakes and pastries themselves using the opponent’s ‘ready-mix’ or buy the applicant’s products.
The element ‘Patisserie’ of the contested sign will be understood as ‘the industry and commercial activity involved in making and selling pastries’ by the relevant public (information extracted from Larousse French Dictionary : Industrie, activité commerciale ayant trait à la fabrication et à la vente des gâteaux.). Since it only describes the producer of the goods this word is not distinctive.
The element ‘Imperial’ contained in both signs is also meaningful for the relevant public. It will be understood as, inter alia, ‘relating to an emperor, his prerogatives, or an empire or as ‘majestic, commanding’ (information extracted from Larousse French Dictionary: Qui se rapporte à un empereur, à ses prérogatives, ou à un empire). Hence, although this term has no meaning directly and specifically related to any of the goods in question from the perspective of the relevant public under assessment, it cannot be ruled out that this element may be considered allusive of the high quality of the relevant goods. Therefore, it is weak.
The earlier sign consists of the word ‘imperial’ inside a blue field and the picture of an ‘eggbeater’. Since the goods belong to the culinary field this picture only has a low degree of distinctiveness as has the blue background of the word-element which is mostly decorative.
The contested sign consists of different Asian (Chinese) characters in different format and below in a smaller font the words ‘Imperial Patisserie’ are depicted. As mentioned above the word ‘Patisserie’ is non-distinctive and the word ‘Imperial’ is distinctive to a low degree. The Chinese characters contained in the sign cannot be read or pronounced by the public in question, therefore they will be seen more like a figurative element. They have a below average degree of distinctiveness because they allude to the idea that the goods are made in China or have typical Chinese flavour, species or ingredients.
Visually, the signs coincide in the word ‘Imperial’ but they are only similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛Imperial’, present identically in both signs. The pronunciation differs in the sound of the letters ‛Patisserie’ of the contested mark, which has no counterpart in the earlier sign. The Chinese characters cannot be pronounced by the relevant public. They will therefore refer to the signs as ‘Imperial’ and ‘Imperial Patisserie’. Considering the non-distinctive character of the word ‘Patisserie’, the signs are highly similar.
Conceptually, both signs will be associated with the meaning of the word ‘Imperial’. The contested mark will also convey the concept of a ‘Patisserie’ and of the Chinese characters, while the earlier sign additionally contains the concept of an ‘eggbeater’. Therefore, considering that the common element ‘Imperial’ has at least a low degree of distinctiveness while the additional word element ‘Patisserie’ in the contested sign is non-distinctive and the Chinese Characters are also weak, the signs are conceptually similar to an average degree.
Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element ‘Imperial’ plays an independent distinctive role in both signs. In spite of the differences especially in the figurative elements, there is a likelihood of confusion because the aural coincidences are overwhelming.
It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.
The decision of the First Board of Appeal of the EUIPO
The First Board of Appeal totally disagrees with the Opposition Division of the EUIPO.
Therefore, it annulled the decision of the Opposition Division to the extent that it rejected the trade mark application of Imperial Enterprises Holdings Limited for the goods under appeal, and the opposition of DR. OETKER NV was rejected in its entirety.
The First Board of Appeal gave, in particular, the following grounds for its decision:
The signs to be compared are the following:
The contested sign consists of different Asian (Chinese) characters in different format and a barely visible sequence ‘IMPERIAL PATISSERIE’ placed underneath. All elements are presented in black and white.
The earlier sign consists of the word ‘imperial’ written in a stylised white font preceded by a device in a shape of an ‘eggbeater’, both elements are placed against a blue irregular background.
The dominant elements of the contested mark are the inscriptions in Chinese characters. Indeed, the sequence ‘IMPERIAL PATISSERIE’ is represented in much smaller dimensions, almost negligible, and in subordinate position, and thus, it is clearly subordinate to the Chinese elements which are visually outstanding.
As regards the earlier mark, the term ‘IMPERIAL’ is normally distinctive for part of the public that will not associate it with any meaning. In case part of the public who understands it as referred to above (the Spanish or French-speaking part of the public), its distinctiveness is reduced given its laudatory character.
The device in a shape of the ‘eggbeater’ is distinctive to a low degree, if any, given that the goods are all ingredients for making puddings or cakes, which are commonly mixed with the help of an eggbeater. Finally, the blue background serves to enhance the importance of the remaining elements and as such plays solely a decorative role.
Regarding the contested sign, the First Board of Appeal noted the following. Firstly, despite the fact that Chinese characters contained in the sign cannot be read or pronounced by the vast majority of the public in question, they allude to the idea that the goods are made in China or have typical Chinese flavour, species or ingredients. Secondly, the sequence ‘IMPERIAL PATISSERIE’ which irrespective of whether understood or not will not be perceived by EU consumers as distinctive.
Therefore, the First Board of Appeal found that the importance in the overall impression of the contested sign attain the oriental characters and as such those will retain in the consumer’s perception since the average consumer normally perceives a sign as a whole and does not, in general, engage in a specific analysis of its various details.
In terms of comparison between the two signs, the analyze made by the First Board of Appeal is totally different from the one made by the Opposition Division.
The First Board of Appeal found that from a visual point of view, there is no relevant point of similarity between the marks since the contested sign is dominated by its figurative Chinese ideograms which have no counterpart in the earlier mark.
The First Board of Appeal also found that from an aural point of view, the subordinate element ‘IMPERIAL PATISSERIE’ of the contested sign will not be pronounced whereas the earlier mark will be pronounced as ‘imperial’. Therefore, the aural comparison is not possible.
Finally, the First Board of Appeal also found that from a conceptual point of view, the contested sign will be associated with the idea that the goods are made in China or have typical Chinese flavour, species or ingredients. Conversely, in circumstances that the term ‘imperial’ of the earlier mark is understood as such, its notion is laudatory alluding to positive qualities of the goods, whereas for part of the public, the only notion given is the figurative element in the shape eggbeater hinting to preparation of the products. Therefore, in any case, the marks’ semantic content is distinct.
Overall, the marks have no relevant degree of similarity according to the First Board of Appeal. As a consequence of lack of any relevant degree of similarity between the marks, the opposition fails. There can be no likelihood of confusion irrespective of the identity of the goods.
Conclusion
Even though the Court of Justice of the EU has, over the course of building its case law on trade marks, established very precise criteria for comparing two trade marks and for assessing the likelihood of confusion, the fact remains that this analysis remains quite subjective.
Even if each trade mark case is different, it can nevertheless be thought that if a Chinese, Japanese or Korean company files an EU trade mark application composed of both words written in Latin characters and ideograms, these ideograms will be considered as the dominant elements of the trade mark if they occupy, within the trade mark in question, a graphically and visually preponderant place in comparison with the words written in Latin characters and if these Latin words are, moreover, considered as weakly distinctive.
The preponderant place of these ideograms should therefore make it possible to rule out any risk of confusion with an earlier mark composed of an identical or similar weak term written in Latin characters, despite the fact that Chinese/Japanese/Korean characters contained in the sign cannot be read or pronounced by the vast majority of the European public in question, which means that the Chinese/Japanese/Korean characters are deemed as figurative elements.
In all cases, it shall be reminded that according to settled case-law, with respect to the comparison of the signs, the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. 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, namely the visual, aural and conceptual aspects.
You can have access to the decision of the First Board of Appeal of the EUIPO by clicking of the following link:
https://euipo.europa.eu/eSearchCLW/#key/trademark/APL_20241024_R0544_2024-1_018764964
This decision can be usefully compared to the decision rendered in January 27, 2023 by the Paris Court of Appeal in a French trade mark case (and not an EU trademark) between Australian company Southcorp Brands PTY Ltd and Chinese company Shanghai Benfu Trading Co. Ltd.
This decision of the Court of Appeal was the subject of an analysis by our law firm, this analysis having been carried out in French and Chinese. You can have access to this analysis via our website, Section « News » and on our LinkedIn page.
As a reminder, the Paris Court of Appeal, in its decision dated January 27, 2023, dismissed the appeal filed by this Australian company against the decision of the Director General of the French Trademark Office who had rejected its opposition. This opposition had been filed on the basis of a trade mark composed solely of Chinese ideograms, and aimed to oppose the registration of a French trade mark application, filed by a Chinese company, and also composed only of Chinese ideograms.
The Court of Appeal, in dismissing this appeal, ruled that the two trade marks in question will be perceived by the French public as purely figurative signs without any particular meaning since this public does not speak or understand Mandarin. This appeal decision is interesting because, to our knowledge, it was the first time that a French court has had to rule on a conflict between two trade marks written in Chinese characters.