When the meaning and pronunciation of words in a trademark are relevant
In evaluating the likelihood of confusion when conflicting names in a foreign language look similar, the meaning and pronunciation of the words in that language should be considered.
Loutfi Management Propriété intellectuelle SARL v AMJ Meatproducts NV (Case C-147/14, judgment of 25 June 2015)
The dispute in this case involved the trademarks depicted below:
In a case commenced by Loutfi seeking injunctive relief, the appeal court in Brussels (Hof van beroep te Brussel) had doubts concerning the proper interpretation of Art. 9(1)(b) of the Community Trademark Regulation (207/2009), which entitles the proprietor of a Community trademark “to prevent all third parties not having his consent from using in the course of trade: a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered; b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.”
The referring court found that all three companies sold food products that are identical or at least similar, prepared in compliance with Islamic precepts (halal products), intended mainly for Muslim customers. Thus the relevant circle of customers was Muslim consumers of Arab origin who buy halal foods in the European Union and have at least a basic knowledge of written Arabic.
The verbal elements EL BNINA, EL BENNA and EL BAINA, which are Arabic terms transliterated into the Latin alphabet, were dominant in the Community trademarks and in the disputed Benelux mark; the elements written in Arabic script were also prominent, but less so. The Arabic words, written in Latin and Arabic characters, bore a certain visual resemblance. However, the pronunciation of the words in Arabic differs considerably, as do their meanings—el benna meaning “taste,” el bnina “softness,” and el baina “sight.”
Under these circumstances, the Court of Justice first pointed out that Art. 9(1)(b) of the regulation does “not make reference to the use of any particular language or alphabet which should or should not be taken into account in assessing the likelihood of confusion which might exist on the part of the public.” The court further stated: “The likelihood of confusion must in particular be assessed by reference to the perception of the relevant public, which consists of average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect.” And under the settled case law, the likelihood of confusion “must be appreciated globally, taking into account all factors relevant to the circumstances of the particular case. That assessment includes a visual, aural or conceptual comparison of the signs at issue, bearing in mind, in particular, their distinctive and dominant components.”
The court consequently held that “those phonetic and conceptual differences should be taken into account because, if they are not, the assessment of the likelihood of confusion could be made only partially and, as a result, without taking into account the overall impression made by the Community trade marks and the sign considered on the relevant public.”
Therefore, Art. 9(1)(b) of the Community Trademark Regulation “must be interpreted as meaning that, 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.”
Dr Monika A. Górska, Intellectual Property Practice, Wardyński & Partners
