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  • David Soutoul

General Court recalls basic principles of likelihood of confusion assessment in Vroom case.

This article first appeared on WTR Daily, part of World Trademark Review, in March 2021). For further information, please go to www.worldtrademarkreview.com.

  • SNCF Mobilités opposed the registration of VROOM in Class 9 based on the earlier French mark POP & VROOM in Classes 9 and 42

  • The court confirmed that there was a likelihood of confusion, reiterating the key criteria of the likelihood of confusion test

  • Any additional elements, such as the use of the marks or the domain of activity of their owners, are not relevant to such assessment

On 24 February 2021 the General Court issued its decision in Bezos Family Foundation v European Union Intellectual Property Office (EUIPO) (Case T‑56/20), which involved the mark VROOM and the earlier national mark POP & VROOM.


Background


The Bezos Family Foundation filed an application for the EU trademark VROOM in Class 9 for “computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education”.


The company SNCF Mobilités (part of SNCF, the French state-owned railway company) filed an opposition against this application on the basis of its French trademark POP & VROOM, which covered “computer software” and “mobile applications”, among other things, in Classes 9 and 42.


The Opposition Division of the EUIPO – and, subsequently, the Board of Appeal – found that there was a risk of confusion between the two signs. The applicant formed an appeal before the General Court.


Decision


The General Court considered three main points: the relevant public, the comparison of the goods and the comparison of the signs.


Relevant public


The applicant contested the Board of Appeal’s findings that the relevant public consisted of the general public and of professionals and that the targeted consumer was the same for both marks. According to the applicant, the prior mark was intended for consumers who wish to use transport applications, while the sign applied for was intended for parents wishing to “boost the development of their children’s education”. Since the applicant is a non-profit organisation, the sign applied for would therefore not concern the general or professional public.


The General Court recalled that, according to case law, the general public of the category of goods or services concerned is “reasonably well informed and reasonably observant and circumspect”. As such, it considered that the applicant had carried out an erroneous comparison by restricting its analysis to specific products in Class 9 covered by the earlier sign, while the goods to consider belonged to a general category, namely “computer software” and “mobile applications”. Indeed, the applicant had analysed the wording of the goods covered by the prior mark in Class 9 as meaning that all the goods were restricted to transport services. However, the terms ‘computer software’ and ‘mobile applications’ were separated by semi-colons, which necessarily entailed a separate analysis of the goods.


Consequently, one could not consider that “software” and “software dedicated to children” target a different public. Therefore, the General Court confirmed the Board of Appeal’s interpretation of the relevant consumer.


Comparison of the goods


Similarly to the reasoning mentioned above, the applicant carried out an arbitrary comparison by arguing that:

since the goods covered by the mark applied for relate to the education and development of children, those goods are not similar to the goods and services covered by the earlier mark.


However, the products covered by the prior mark, namely “computer software” and “mobile applications”, were general and not dedicated to the field of transport – contrary to what claimed the applicant – despite the fact that the prior mark also covered certain goods with a more specific wording. Thus, the goods covered by both signs were similar.


Comparison of the signs


The applicant contested the existence of a risk of confusion between the signs due to the difference in the number of letters and the conceptual differences. The prior mark consisted of the terms ‘pop’, referring to pop music, and ‘vroom’, which is an onomatopoeia referring to the sound of a motor. Additionally, as the term ‘vroom’ was not in first position in the mark, it would have a lesser impact on the consumer. Finally, the applicant argued that the term ‘vroom’ in the prior mark lacked distinctive character due to its use for transport services and the mark owner’s domain of activity.

The court rejected this reasoning. It pointed out that the fact that a common term is not in first position in a mark is not sufficient to exclude a risk of confusion. Moreover, the fact that the relevant consumer may make a link between the onomatopoeia ‘vroom’ and the activity of the mark owner did not establish the descriptiveness of the term.

Consequently, in light of the global comparison of the signs and the fact that there was a strong similarity between them, a risk of confusion was present and the contested application had to be rejected.


Comment


The decision reiterates several key principles:

  • the criteria to take into consideration when evaluating who the relevant consumers are;

  • the method for analysing the similarities between the goods and services covered; and

  • the way in which similarities between the signs must be found.

Any additional elements, such as the use of the marks or the domain of activity of the mark owner, are not relevant to the assessment of the likelihood of confusion.


The decision thus highlights the importance of covering a general category of products while using a restricted wording for the goods. In the present case, if the wording of the goods covered by the two signs had been restricted to a particular domain of activity, the outcome of the decision may have been different. It is thus important to take into consideration the wording of the goods and services covered by prior marks when devising a filing strategy; simply relying on the activity of the owner of the prior rights will not be sufficient to eliminate a possible risk of confusion.


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