Word v Image Marks: Pelican Makes Feathers Fly

When is a purely figurative mark too close to an earlier registered word? The CFI mulled this question recently in a case involving a pelican logo and earlier CTMs for the word PELIKAN with a quite different pelican logo (Case T-389/03, Dainichiseika Colour & Chemicals Mfg. Co. Ltd v OHIM (Pelikan Vertriebsgesellschaft) ). The ruling gives useful guidance for those assessing whether pictorial and word marks collide.

Flight of Fancy

The applicant, a Japanese chemical company, had applied to register its logo depicting a stylised pelican inside a circle, sitting on a pedestal, for chemicals, colorants and plastics in Classes 1, 2 and 17.

The German opponent challenged the application based on earlier CTMs for the stylised word mark PELIKAN followed by a logo depicting a bird that resembled either a stylised pelican or a stylised swan, also in a circle and sitting on a pedestal. The earlier CTMs covered chemicals, plastics and paints in Classes 1 and 2. The Opposition Division and the Second Board of Appeal found a likelihood of confusion and upheld the opposition.

The Japanese applicant appealed, arguing that the relevant public was specialised and would note the visual differences between the marks and, in particular, the fact that the bird in the earlier CTMs arguably resembled a swan.

Birds of a Feather?

On appeal, the Court of First Instance found for the opponent.

It agreed that the relevant public included specialists, but did not regard the visual differences between the marks as sufficient to distinguish them even if the goods were only chosen after visual inspection. In its view, the visual differences between the marks were neutralised by other similarities, including the close similarity in the way in which the birds were presented. In both cases, the bird was facing left inside a circle, and was sitting on a pedestal.

Moreover, the marks were phonetically identical or at least very similar. The earlier composite mark could only be uttered as PELIKAN. The opposed pictorial mark was clearly a stylised representation of a pelican and was likely to be referred to as such by the average consumer who encountered it. As the earlier marks were CTMs, all languages of the E.U. were relevant, and the CFI took notice of the fact that in German, Danish and Swedish, PELIKAN meant "pelican," and that the corresponding word in many other E.U. languages was phonetically similar.
Conceptually, too, the CFI found that the marks were identical. Although there was some doubt that the bird in the earlier marks was a pelican or a swan, that doubt was likely to be resolved in favour of a pelican due to the presence of the word PELIKAN in the marks.

Taking these points and the identity or close similarity of the goods into account, the visual differences assumed less importance. The average consumer encountering the marks was likely to perceive each as a "pelican" mark and to remember the image of a pelican facing left inside a circle. Overall, the CFI held, the marks were similar, and the Board of Appeal had been right to find a likelihood of confusion.

Comment

A picture is worth a thousand words, and with good reason. As this case shows, an image can speak as clearly as a word and convey exactly the same meaning. Conflicts between pure pictorial marks and word marks are therefore bound to happen, and the principles in this case are directly relevant to such disputes.

This was, of course, a case involving a purely figurative mark and earlier composite marks including both a word and logo. It contains parallels with the well-known SABEL case (C-2551/95), which involved an image of a bounding cheetah pitted against a mark comprising a similar image together with the word SABEL. That case was different, though, in that, as the CFI observed, the similarities between the images arose from the natural and normal pose of the cheetah, not from the more stylised and contrived circle, pedestal and left-facing imagery of the pelican marks. In any event, the word SABEL pointed away from identity or similarity, rather than toward it as in PELIKAN.

More similar is Mast-Jägermeister AG v OHIM (Licorera Zacapaneca S.A.) (Case T-81/03), in which the CFI overturned OHIM and found a likelihood of confusion between CTMs for the deer head logo appearing on Jägermeister liquor (without the word "Jägermeister") and earlier CTMs for a similar deer head logo with the words VENADO ESPECIAL, which mean "Special Deer" in Spanish. The Board of Appeal had regarded the words VENADO ESPECIAL as important distinguishing features, but the CFI considered that, in Spain, they referred directly to the figurative device of a front-facing deer head, which was visually similar to the later front-facing deer head. The CFI held that this created phonetic identity or similarity, as well as conceptual similarity.

There is no doubt that the similar features of the pelican and deer logos were highly relevant to the decisions in these two cases. Nonetheless, the pelican logos were overall quite different, and there was some ambivalence as to whether the earlier ones depicted a pelican or a swan. Had the word PELIKAN not been part of the earlier marks, it is possible that in a logo for logo comparison, the marks may not have been regarded as confusingly similar.

Although neither PELIKAN nor Mast-Jägermeister concerned a purely figurative mark against a pure word mark, many of the same criteria are likely to apply. In particular, whether the figurative mark would be pronounced identically or similarly to the word mark in the relevant language or languages is likely to be highly relevant. If an earlier mark is a CTM, then phonetic identity or similarity in any E.U. language may be sufficient to allow a finding that confusion is likely.

Conceptual identity may be a given where an image mark competes with a word mark comprising the word for the image depicted. However, where there are language differences and the word in question may not be recognised in the member state of the earlier rights, there may be a reasonable argument against even conceptual identity or similarity.

It therefore seems that the key to assessing conflicts between pictorial marks may, paradoxically, be words-namely, how the marks are uttered and understood in the relevant markets. Language is a critical part of this. The decision in PELIKAN shows that overlooking this may result in success flying away.