Two-part vs. single-part mark

In practice, the question arises very frequently whether two marks are liable to confusion if one mark (here GLAMOUR) is merely part of another, two-part mark (here TUDOR GLAMOUR). The General Court (EuG) had to decide on this following a corresponding action brought by the applicant of the younger mark GLAMOUR, after the trademark office had upheld the opposition based on the earlier mark.

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The proprietor of the internationally registered mark TUDOR GLAMOUR for goods in class 14 (precious metals, jewellery, timepieces, etc.) succeeded with his opposition against the application for the mark GLAMOUR in the same class before the HABM. The trademark office upheld the opposition, against which the mark applicant defends himself with his action before the General Court (EuG). He seeks the annulment of the decision and the registration of his mark.

The court's decision

By judgment of 04.07.2014 (Az. T-1/13), the General Court (EuG) dismissed the action on the grounds that there was a likelihood of confusion between the two signs.

In the court's view, when comparing two signs, it is not permissible to focus schematically on only one part of a multi-part mark. This is only possible if precisely this component is distinctive for the overall sign. Otherwise, the sign consisting of several parts must be considered as a whole. This was the case here with TUDOR GLAMOUR because the component TUDOR was equally significant and thus contributed to the overall impression of the mark to the same extent. In this respect, there was an exception to the rule that the relevant public generally attaches greater importance to the beginning of a word. As a result, in the court's view, there is a similarity between TUDOR GLAMOUR and the younger application GLAMOUR.

According to the court's reasoning, this applies in any case to the public which, whilst not familiar with English history, is nonetheless familiar with the English language and therefore whilst not understanding the meaning of the term "TUDOR" (the house of that name), does understand the term "GLAMOUR". Otherwise, a conceptual dissimilarity would result. However, in those relevant circles which do not understand both terms, no conceptual comparison can be made, so that here neither a (conceptual) similarity nor a dissimilarity can be established.

Since, owing to the unity of the Community mark, none of the relevant circles can be disregarded, the court concludes that, viewed as a whole, there is a likelihood of confusion.

Conclusion

The comparison between single-part and multi-part marks that share one or more components requires a differentiated consideration from a conceptual perspective, which distinguishes between those parts of the public that recognise the meaning wholly or in part and those that do not. If a similarity can be established only in a part of the relevant circles that is not negligible, this is significant for the decision as to whether or not a likelihood of confusion exists overall.