With its decision of 16 October 2018 the General Court dismissed an appeal brought by Asics, denying protection to the crossed stripes trademark on the grounds that there was no likelihood of confusion between the Asics trademarks, registered in the EU and in Spain for footwear, clothing and leather goods and the EU trademark filed for the same type of goods by a Dutch company.
The General Court ruled that there was no likelihood of confusion pursuant to Article 8(1) b) Regulation 207/2009 due to the different overall impression created in the consumer by the two trademarks. According to the Court both marks are composed of four intersecting lines. However, while the Asics trademark is perceived by the public as an “X” superimposed on a “V”, the trademark filed by the Dutch company is perceived as a simple hashtag.
This finding is open to question first of all because a buyer of sports goods is a consumer with an average level of attention in whose eyes the different curvature of the lines has less impacton the overall impression created by the marks in question, it being unlikely to be perceived as evoking letters or symbols. Furthermore, the average consumer rarely has the chance to directly compare the marks but must instead rely on an imperfect memory thereof. It is, therefore, highly probable that the consumer will remember the intersection between the four lines rather than the different curvature of the lines.
The Court also disregarded the fact that, in assessing likelihood of confusion, a certain degree of interdependence between factors relevant for the purposes of assessment and, in particular, the degree of similarity between the marks and between goods and services needs to be considered. According to the unanimous case law of the CJEU a lower degree of similarity between goods and services may be offset by a higher degree of similarity between the marks and vice versa (decision C-39/97, Canon). In the case at hand the Court could have taken into due consideration the identity between the goods covered by the Asics trademark and by the contested trademark, the lesser degree of visual similarity between the marks thus being offset.
Again on the grounds of lack of similarity between the signs the Court found that the requirements for application of Article 8(5) Regulation 207/2009 were not met and dismissed the Asics appeal also on this point. However, the Court seems to have forgotten that while the protection afforded by Article 8(1) b) is conditional upon ascertainment of a degree of similarity between the marks at suit such as to entail a likelihood of confusion for the relevant public, there does not necessarily need to be this likelihood of confusion for application of the protection afforded by Article 8(5) Regulation 207/2009. Indeed, the detriment as perArticle 8(5) Regulation 207/2009, should it occur, is the result of a certain degree of similarity between the earlier renownedtrademark and the trademark applied for, as a result of which the relevant public only associates one trademark with the other, without there being any confusion.
Fortunately for Asics the CJEU, before which the decision may be appealed, still has the last word on the matter. We therefore look forward to seeing whether the CJEU will question the findings reached by the General Court.