In a recent CJEU decision concerning the marks X and XKING for tyres, the court considers the amount of protection that can potentially be afforded by a stylised letter mark.
In 2012, Continental Reifen Deutschland ("Continental") filed an application for the registration of a figurative EU trade mark (EUTM) in class 12 for ‘tyres; Inner tubes for tyres’. This was opposed by Compagnie générale des établissements Michelin ("Michelin") on the grounds of likelihood of confusion with various earlier international marks and an earlier French figurative mark registered for ‘Envelopes, inner tubes for pneumatic tyres’. The mark applied for and the mark relied on were as follows (the "Marks"):
The opposition was initially successful, but overturned by the EUIPO Board of Appeal. However, the EU General Court then reversed the Board of Appeal's position, based on the following factors:
1. The Marks were of average visual similarity as:
both Marks contained an X which was white and outlined in black;
the X in XKING was dominant; and
the X in XKING carried more weight than KING which was viewed as weakly distinctive.
2. The Marks were of average phonetic similarity as their rhythm and intonation was only slightly different and they shared the same first syllable; and
3. Michelin's Earlier Mark carried a normal level of inherent distinctiveness as it was stylised and not descriptive of tyres.
Continental's arguments before the CJEU
Continental then further appealed to the CJEU, submitting the following arguments:
The General Court's evaluation of distinctiveness of the Application and its similarities to Michelin's Earlier Mark were incorrect;
Generally a single letter element of a mark should constitute a weak distinctive element of a sign; and
Michelin's Earlier Mark lacked the distinctiveness which the General Court had held.
Continental made no headway with their first two points as the CJEU dismissed their attempts to reargue these issues stating that an appeal was limited to points of law and therefore no re-evaluation of the facts could take place. (The CJEU's decision can be found here.)
The CJEU did re-examine Continental's evidence that X used in isolation, or in combination with other letters, in Michelin's brochures to designate the tread pattern of some of its tyres meant that Michelin's mark lacked distinctiveness. The CJEU found that following proper examination of Michelin's brochures it was clear that the stylised letter "X" was used by Michelin to designate the tread pattern of tyres and in light of this the General Court was wrong to say that the X mark had normal distinctiveness.
Despite this finding, the CJEU dismissed Continental's appeal suggesting that although the General Court had got one point wrong this was only one factor in many interplaying issues when assessing similarity of a mark and likelihood of confusion. The CJEU found that a weakly distinctive earlier mark may still cause confusion, there is just a lower probability of this, and due to the marks and their respective goods being highly similar or identical, the General Court was correct in its finding of likelihood of confusion.
This case took a long time to reach its conclusion as Continental's application was filed in February 2012 and the final decision of the CJEU was not given until 26 July 2017. The Marks were subjected to intense analysis over this period of time which ultimately led to the decision that a weakly distinctive trade mark for a single, slightly stylised letter X prevented the registration of a stylised mark for XKING.
This decision is particularly interesting for companies undertaking clearance searches to protect a brand or for practitioners when preparing advice on whether or not to proceed with a new trade mark application, remembering that depending on the marks in question, an earlier mark with weak distinctive character may still cause confusion.
With thanks to Amelia Thomson for her assistance in writing this blog.