Offal decision or problem cured? CJEU decision on foreign language trade marks

The Court of Justice of the European Union (the CJEU) has recently given guidance as to how marks which feature non-Latin scripts such as Arabic, Japanese kanji and Chinese hanzi, should be compared when assessing similarity. It held that where the goods or services specified are directed at consumers who are expected to understand the script then a comparison must also be made in the relevant language as well as any domestic language.

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A load of Babel

The European Union contains an incredibly diverse and rich blend of languages from across the world. The CJEU has already made it clear that if Community trade marks have a meaning in any of the 24 official languages, then that meaning must be considered as part of the overall assessment of whether there is a likelihood of confusion
(Matratzen Concord AG v Hukle Germany SA, Case C-421/04, [2006] ECR I-2303, [2006] ETMR 48). In the Belgian case of Loutfi Management Propriété intellectuelle SARL v AMJ Meat Products and another, Case C-147/14, 25 June 2015, the CJEU has now given specific guidance on how to assess similarity where marks are written in non-official languages.

Background

In Loutfi v AMJ Meat Products, two halal meat companies each owned registered trade marks which were protected for food and drink items. AMJ Meat Products’ registration specified that it relates to halal food products.

Party Trade Marks Translation
Loutfi Management Propriété intellectuelle SARL (Loutfi) elbenna
CTM registration no. 8572638
EL BENNA is Arabic for taste
elbnina
CTM registration no. 10217198
 EL BNINA is Arabic for softness
 AMJ Meatproducts NV and Halalsupply NV
(AMJ Meat Products)

elbainaBenelux registration no. 1235619
 EL BAINA is Arabic for sight

The dispute began when Loutfi claimed that the goods of AMJ Meat Products were counterfeit and should be seized. Loutfi alleged that the similarities of the marks and the goods and services led to a likelihood of confusion by consumers.

The Latin characters within the marks resemble one another fairly closely: they are each composed of two words, the first being EL, the second containing five letters and beginning with a B, ending with A and containing an N. However, the Belgian court decided that the relevant public was Muslim consumers of Arab origin, who consume halal foods and have a basic knowledge of written Arabic. For those consumers, the terms EL BENNA, EL BNINA and EN BAINA (written in Latin and Arabic script) would be translated into several conceptually different meanings (being “taste”, “softness” and “sight”). Those differences could lead to an alternative outcome to the assessment of confusion.

With this in mind, the Belgian court asked the CJEU whether the Arabic translation and pronunciation of EL BENNA, EL BNINA and EN BAINA may or must be considered when considering similarity.

Problem cured?

Firstly, the CJEU noted that Article 9(1)(b) of Council Regulation 207/2009 which sets out the test for a likelihood of confusion does not specify that any particular language or alphabet should or should not be taken into account when making the assessment.

The CJEU followed its own case law that requires trade marks to be assessed from the point of view of the “relevant public”. It said:

“In order to assess the likelihood of confusion that may exist between a Community trade mark and a sign which cover the same or similar goods and which both contain a dominant Arabic word in Latin and Arabic script, those words being visually similar, in circumstances where the relevant public for the Community mark and for the sign at issue has a basic knowledge of written Arabic, the meaning and pronunciation of those words must be taken into account.”

Comment

This is reassuring reading, which reflects the commercial reality of the EU’s diverse lingua franca. Whilst in this context the mark is written in Arabic, the principle will apply equally to Japanese, Chinese, Korean or indeed any non-Latin script.

Owners of trade marks which include non-Latin scripts should consider whether the goods and services are directed at a specific consumer or to the public at large as this will affect the assessment of the likelihood of confusion. Consideration must also be given to whether the translated conceptual differences are sufficient to overcome the visual and aural similarities between the marks.

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