A distinction should be made between the assessment of the conceptual differences between signs at issue and the overall assessment of their similarities, which form two distinct stages in the analysis of the overall likelihood of confusion, the first being a prerequisite for the second.
Appeal against the judgment of the General Court of June 1st 2016 in which the General Court dismissed the action against the decision of the Board of Appeal of EUIPO in which it found that there was no likelihood of confusion between the older international figurative mark designating the Union and France of “CHAMPION” and the international word mark designating the European Union “CHEMPIOIL” for hydraulic fluids, washing and cleaning preparations and lubricants.
The CJEU dismisses the appeal. The first ground of appeal is inadmissible in so far as it alleges a distortion of the evidence, as the appellant merely criticises the reasoning of the judgment under appeal. In doing so, the appellant seeks in effect to obtain a new assessment of the conceptual differences between the two signs at issue. In so far as the appellant alleges a failure to state reasons, the first ground of appeal is also inadmissible, because the General Court clearly set out the reasons which led it to consider that the signs at issue should be regarded as conceptually different.
In the first part of the second ground of appeal, the appellant alleges that the General Court misinterpreted the case law relating to the neutralization of visual and phonetic similarities by conceptual differences. The CJEU first observes that this ground is based on a misinterpretation of the case law. A distinction should be made between the assessment of the conceptual differences between the signs at issue and the overall assessment of their similarities, which form two distinct stages in the analysis of the overall likelihood of confusion, the first being a prerequisite for the second. In the present case, the General Court correctly distinguished the assessment of the conceptual differences in the analysis of the possible neutralisation of visual and phonetic similarities by conceptual differences. Contrary to the appellant’s assertion, the General Court did not hold that the neutralization of visual and phonetic similarities could be ruled out only if both of the signs at issue had clear and specific meanings. In a factual assessment, which it is not for the Court of Justice to review, the General Court held that the sign ‘CHAMPION’ had a clear and specific meaning and that the sign ‘CHEMPIOIL’ had no such meaning, namely that it did not have a meaning which could be immediately understood by the relevant public. Finally, without erring in law, it held that the visual and phonetic similarities of the signs at issue could be neutralised.
The second part of the second ground of appeal complains that the General Court implicitly held that a conceptual difference between the signs at issue leads automatically to the conclusion that the signs at issue are dissimilar overall, despite any visual and phonetic similarities. The Court of Justice finds that the General Court correctly applied article 8(1)(b) of the EU Trade Mark regulation. In applying the applicable case law, the General Court did not err in law when it considered that the Board of Appeal had correctly held that a consumer would make a distinction between the signs at issue, despite their visual and phonetic similarities.
The third part of the second ground of appeal fails, because the appellant did not base the ground of appeal which it raised for the first time at the hearing before the General Court on any element of law or fact disclosed during the proceedings giving rise to the judgment under appeal. The appellant itself recognizes in its appeal that the factual evidence on which it relies formed part of the evidence of EUIPO.
C-437/16 P - ECLI:EU:C:2017:737