No likelihood of confusion between BLACK TRACK and BLACK JACK

The assessment of similarities between two trade marks is the most complex issue that trade mark law has to offer. The decisive categories are visual similarity, phonetic similarity and conceptual similarity. In this context, conceptual factors may in some cases neutralise a similarity that would have to be affirmed on phonetic and/or visual grounds, as the Court of First Instance (EuG) decided in the case BLACK TRACK ./. BLACK JACK.

The proprietor of a European Union trade mark BLACK TRACK registered in particular for games and toys filed an opposition to the following registration of the trade mark essentially consisting of the terms "BLACK JACK" and two playing cards:

The Court's decision

By judgment dated 06.03.2015 (Az. T-257/14), the Court of First Instance (EuG) upheld the action and set aside the decision under appeal on the ground that no likelihood of confusion existed. According to established case law, a likelihood of confusion exists between two signs if the relevant public could believe that the goods or services marked by those signs come from the same undertaking or from undertakings which are economically linked. This requires agreement in the distinctive (characteristic) elements of the signs, which must be affirmed here in visual and phonetic terms. However, according to the Court's view, it must also be taken into account that both signs have a meaning. BLACK JACK designates the card game of the same name, BLACK TRACK means "black trail" at least for English-speaking sections of the public. For this reason, the similarities that can be established would be neutralised again, with the result that no likelihood of confusion exists. According to the Court's reasoning, this is already the case if only one of the two opposing signs has a meaning.

Conclusion

The decision demonstrates how far apart the natural perception and the legal position are in trade mark law. It also shows the full complexity of assessing trade mark law issues in the area of trade mark conflicts and likelihood of confusion.