Mega Brands International v OHIM (Case C-182/14 P)
This case concerns the Court of Justice of the European Union (CJEU) deciding whether to set aside the General Court’s decision as it was alleged by the appellant, Mega Brands, that the General Court failed to carry out an assessment of the likelihood of confusion between two marks by not considering them in their entirety and did not sufficiently substantiate its reasoning for coming to the decision they did.
Mega Brands trade mark applications / Diset’s oppositions
Mega Brands applied to register two trade marks in Class 28, however these were opposed by Diset SA on the basis that Mega Brands applications were sufficiently similar in terms of both the marks and the goods such as to create a likelihood of confusion.
|Applications by Mega Brands||Opposition by Diset|
(Magnext Device Mark)
(Magnext Word Mark)
|MAGNET 4 (Spanish word mark)|
|Classes||Class 28: toys and playthings, in particular multi-part construction toys, its parts, its accessories and its fittings||Class 28: games, toys, gymnastic and sports articles not included in other classes; decorations for Christmas trees|
The OHIM Opposition Division upheld Diset’s oppositions as did the Board of Appeal.
General Court judgement
The case then progressed to the EU General Court who held the following:
1. The Magnext Device Mark has a very weak degree of visual and phonetic similarity to MAGNET 4 as the Magnext Device Mark is clearly divided into two parts: ‘mag’ and ‘next’ and the excessive size of the capital ‘X’ does not appear in the earlier mark. Furthermore, the ‘X’ gives rise to a clear pronunciation of the second component of the Magnext Device Mark and therefore is likely to result in a phonetic reproduction of that mark as two words, whereas ‘MAGNET’ will be pronounced as a single word.
2. The MAGNEXT Word Mark has an average degree of visual and phonetic similarity to the earlier mark as it differs from the dominant element ‘MAGNET’ only by the capital letter ‘X’.
3. The Magnext Device Mark and Word Mark are conceptually dissimilar to MAGNET 4 because the existence of ‘magnetico’ (Spanish word commonly used to designate an article with magnetic properties) has the consequence that the public will associate the earlier mark with objects having such properties.
4. Distinctive character of MAGNET 4 is week because the sign sends a message that may be connected, in the mind of the relevant public, to the characteristics of the goods for which they have been registered.
5. GC’s verdict with regard to Magnext Device Mark - no likelihood of confusion, based on an overall very weak degree of similarity and the weak degree of distinctiveness of the MAGNET 4 mark.
6. GC’s verdict with regard Magnext Word Mark - likelihood of confusion established, based on an overall medium degree of similarity and despite the weak degree of distinctiveness of the MAGNET 4 mark.
The General Court annulled the Board of Appeal’s decision concerning the Magnext Device Mark and dismissed the application for annulment of the decision concerning the Magnext Word Mark.
Mega Brands appealed the General Court’s decision in relation to the Magnext Word Mark alleging (1) infringement of Article 8(1)(b) of Regulation 207/2008 (mark should be refused registration if the mark and the goods/services are identical or similar to an earlier mark that there exists a likelihood of confusion) and (2) the General Court failed to provide sufficient reasons for its decision.
First ground of appeal
The first ground of appeal was split into four part.
1. CJEU rejected Mega Brands argument that the General Court had made an error in categorising MAGNET as the dominant element even though it had found it to be descriptive, in line with settled case-law it could still be seen as a dominant character within the comparison of the signs.
2. CJEU upheld Mega Brands argument that the General Court failed to take into consideration the figure 4 which is a component of the mark MAGNET 4 when assessing the visual and pronunciation analysis of both the marks.
3. and 4. CJEU rejected Mega Brands argument that the General Court had distorted the facts and that they erred in law by taking the view that MAGNEXT and MAGNET 4 are visually similar, even though MAGNEXT is composed of two elements ‘mag’ and ‘next’ like the Magnext Device Mark. CJEU remarked that Mega Brands had failed to provide legal arguments in support of their allegation of distortion of facts.
Second ground of appeal
The CJEU upheld Mega Brands second ground of appeal that the General Court’s finding on visual and phonetic similarity between the marks was based on the dominant character of MAGNET and without considering the relevance of the figure ‘4’ their findings was insufficiently substantiated as no reasons were given whether express or implicit.
For the reasons mentioned above, the CJEU set aside the General Court’s judgement in relation to the Magnext Word Mark and referred it back to the General Court for judgement once again.
Judgment Date: 19 MARCH 2015