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This briefing note is only intended as a general statement of the law and no action should be taken in reliance on it without specific legal advice.

XKING crossed out by European Court of Justice
 Briefing 
Date
01 September 2017

XKING crossed out by European Court of Justice

In a case which raises a number of issues for those looking to clear marks, the European Court of Justice (ECJ) has upheld a finding of a likelihood of confusion between an application by German tyre company Continental for the mark XKING with an earlier French registration owned by Michelin for a stylised letter X. Both marks covered identical or highly similar Class 12 goods relating to tyres.

The decision raises the bar for appeals to the ECJ, especially where based on factual errors or relatively minor technical points; given the volume of appeals of trade mark cases, this is perhaps not surprising from a policy perspective.

Appeals to the ECJ are limited to points of law only. The General Court (the second highest EU court below the ECJ) has jurisdiction to find and appraise the relevant facts and to assess the evidence, which will not ordinarily be re-assessed on appeal to the ECJ. The ECJ cannot review the appraisal of facts and assessment of evidence on appeal, except where the facts or evidence are considered to be "distorted".

Even where the ECJ does review evidence, this decision suggests that it will not overturn the General Court's decision unless the variation of the facts would categorically lead to a different conclusion. The ECJ confirmed that, if the General Court may still have reached the same conclusion, it will not intervene and overturn the decision. Ultimately in this case, while the ECJ considered that facts relating to the distinctiveness of the earlier mark were distorted - because the ECJ considered the earlier mark less distinctive than the General Court - the appeal was dismissed as the original decision may still be valid (without fully re-assessing the "likelihood of confusion" with the correct facts in mind). 

A further point of interest was the ECJ's rejection of an assertion that a single letter element of a sign constitutes, as a general rule, a weakly distinctive element of a sign. Whilst there are certain categories of signs, including single letters, which are less likely to have distinctive character initially, the ECJ said there was not a general, abstract rule that the distinctiveness of such letters must, in all cases, be considered to be weak. Therefore, single letter marks, including those featuring a limited degree of stylisation, should be considered seriously when identified in clearance searches, as they will not automatically be presumed to be weak.

Finally, the ECJ adopted, and therefore seemingly endorsed, the rather mechanical approach to the assessment of trade mark conflicts often applied by the EUIPO, rather than taking the holistic approach advocated in the case law of looking at the likelihood of confusion among the average consumer of the relevant goods/services taking into account all relevant facts.