This article’s headline states that the GCEU (Court of First Instance based in Luxembourg, which has jurisdiction over matters relating to the registration of European trade marks) has confirmed a previously established position. In fact, we must point out that issues such as the likelihood of confusion fall within the scope of what are known as indeterminate legal standards; in other words, standards in which the judge’s assessment will always play a part, and which cannot be confirmed through empirical analysis (the range of cases is so vast and so diverse that it is frankly difficult to find identical cases in the case law reports). It is, however, possible to establish general guidelines for the various scenarios we may encounter in order to make the appropriate comparison in each case.

Trade marks consisting of a single letter of the alphabet are subject to their own rules, including for the purposes of comparison in inter partes disputes where one of the parties claims to have a prior right that precludes the registration of a subsequent trade mark. The specific nature of these trade marks is that they claim exclusive appropriation of a single letter of the alphabet, which raises doubts about the legitimacy of such a monopoly, given that such a simple element–one with a use that is so commonplace in commercial transactions–it seems a priori doubtful that it could be the subject of exclusive appropriation by a single entity, just as is the case with numbers, colours or basic geometric shapes.

To address the uncertainties surrounding this type of trade mark, European case law has established a series of guidelines relating to the sign’s inherent distinctiveness, its enhanced distinctiveness (which may amount to its reputation), and the existence of a mere likelihood of confusion.

As regards the distinctiveness of a letter considered on its own, without stylisation, colours or additional graphic elements (known as mere word marks), it is now more or less universally accepted that such signs may have minimal but sufficient distinctiveness to qualify for registration, provided that they are not generally associated by consumers with the specific goods and services for which protection is sought. Nevertheless, although such trade marks may be registered, their ius prohibendi is substantially limited in relation to third-party trade marks, such that even the slightest differences between the signs in question may rule out any likelihood of confusion.

Conversely, when the proprietor of a trade mark consisting of a single letter can demonstrate that it is well-known and, consequently, entitled to enhanced protection, their opposition to a third party’s trade mark is far more likely to succeed. It is worth noting that the reputation of this type of trade mark is often linked to a specific graphic representation (think of McDonald’s iconic “M” or Netflix’s “N”, which colours and typography are intrinsically linked to the enhanced distinctiveness of these trade marks), which in itself constitutes a significant distinguishing factor compared to word marks. However, the prevailing case law holds that, with regards to well-known trade marks, a lower degree of similarity between the signs to be compared may be required, since what is assessed is not whether consumers might confuse one sign with the other, but rather the evocative nature of the applicant’s trade mark in relation to the well-known one. This is because it may eventually lead to a link being established between the two in the consumer’s mind, and even extend its protection to goods and/or services which, when assessing the likelihood of confusion, are not considered to be related or complementary. That said, we must bear in mind that, when discussing well-known trade marks and their ability to prevent third parties from using them, other factors must also be taken into account, such as the existence of harm or unfair advantage. Similarly, as a possible defence for the applicant’s trade mark, it may be demonstrated that there is a legitimate reason for its registration, which may serve to exclude the applicability of this prohibition.

And lastly, we come to the case addressed in the GCEU’s judgment of 13 May, which concerns the likelihood of confusion among consumers regarding the disputed coexistence in the registration of two trade marks consisting of the letter “K”, belonging to two banking institutions, namely KUTXABANK (a bank formed in 2012 following the merger of three Basque savings banks, BBK, Kutxa and Vital) and KLARNA BANK (a Swedish banking institution).

While there is little doubt today as to the reputation of KUTXABANK’s distinctive “K”, the fact remains that this was not part of the proceedings initially before the European Union Intellectual Property Office (EUIPO) or subsequently before the GCEU, with the entire dispute centring on the alleged existence (as claimed by KUTXABANK) of a likelihood of confusion, due to the similarity in the visual representation (and phonetic identity) between the signs. In other words, the judgment does not refer to any general appropriation of the letter “K”, but rather to the incompatibility of a “K” with a specific graphic representation in relation to another “K” with a highly similar graphic representation. In fact, in its earlier decision, the EUIPO had described the degree of visual similarity as low (and yet still found the trade marks to be incompatible in relation to services typical of a banking institution), whereas the General Court, in its recent judgment, overturned the EUIPO Board of Appeal’s assessment. Here, the General Court established that the level of visual similarity between the signs is high, which must give rise to a likelihood of confusion, even assuming that the level of attention of the relevant public is high, taking into account the nature of the services covered by both trade marks. The GCEU’s judgment thus follows the guidelines set out in previous judgments, to the effect that the likelihood of confusion between the trade marks at issue cannot be inferred solely from the fact that the signs in question are phonetically identical, but must also be based on the fact that those signs have a higher-than-average visual similarity and that the services in question are identical. In this regard, it is significant that the General Court finds that there is a likelihood of confusion based on the protection of a specific combination of elements, and not on an element in itself (the letter “k” as such) which forms part of that combination, the term “combination” (being understood to refer to its distinctive graphic configuration).

Emilia López Camba, Intellectual Property Lawyer | Litigation Department