The General Court has provided clarity on the role of conceptual similarity in assessing the likelihood of confusion between trade marks in different languages. 

The focus of this case was on whether the English sign ‘MAY TEA’ and its Russian equivalent ‘майский чай’ could be considered confusingly similar for EU consumers. 

Background

By way of background, Schweppes International Ltd (‘Schweppes’) obtained EUTM registrations for various ‘MAY TEA’ label marks (including labels applied to drinks bottles) that covered flavoured tea-based beverages in Classes 30 and 32. MAY OOO, a Russian company, owned an earlier International Registration for ‘майский чай’, which translates to ‘MAY TEA’, in Class 30, designating several European countries, including Latvia. May applied to invalidate Schweppes’ registrations, alleging a likelihood of confusion. The EUIPO’s Cancellation Division  rejected the invalidity applications. However, the Board of Appeal reversed the decisions, finding that the marks were conceptually identical and that this conceptual identity outweighed their visual and phonetic differences. Schweppes appealed to the General Court. 

General Court’s findings 

The General Court annulled the Board of Appeal’s decision and emphasized the importance of an overall impression and assessment of all factors contributing to a finding of likelihood of confusion. 

In terms of a visual and phonetic comparison, the General Court noted significant visual differences between the marks, primarily due to the use of different scripts (i.e., Latin v. Cyrillic). Phonetically, the pronunciations differed, i.e., ‘MAY TEA’ as ‘mei-tee’ and ‘майский чай’ as ‘mai-skiy-chai’, resulting in a low degree of oral similarity. 

In terms of the conceptual comparison, the Court acknowledged that linguistic differences alone are not sufficient to exclude a finding of conceptual similarity, but where a translation is required there is no immediate association of one mark with the other. The Court ruled that conceptual similarity alone was not sufficient to establish likelihood of confusion here, especially in view of the visual and phonetic differences and taking into account the weak distinctive character of the common element, ‘TEA’/’ чай’’ and the fact that the goods (tea) are bought based on their visual characteristics. The Court emphasized that for conceptual similarity to play a decisive role, it must be supported by other factors, such as strong distinctive character or a high degree of similarity in other aspects. 

The Board of Appeal’s finding in favour of May OOO had focused on the perception of Latvian consumers who understand both English and Russian and would consider the signs to be conceptually identical. However, the Court concluded that the differences in script and pronunciation would not lead to confusion, even though the marks were conceptually identical and covered the same goods. 

Comment

This decision highlights the necessity for trade mark owners to consider all aspects of similarity, i.e., visual, phonetic, and conceptual – when assessing potential conflicts and this global assessment should take into account surrounding factors such as whether consumers are likely to rely on the visual characteristics of the mark when purchasing the goods. Conceptual identity/similarity, especially across different languages and scripts, where it is not immediately obvious, is unlikely to suffice to establish a likelihood of confusion, particularly where there are strong visual and phonetic differences between the marks. 

Nonetheless, there may be instances where conceptual identity will be an influencing factor in a finding of likelihood of confusion, To clear a mark for use and registration, therefore, comprehensive searches in all relevant languages and scripts are advisable.