It is common to find different entities using translations of the same (or very similar) trade marks across the EU. Here, we consider when the EUIPO/CJEU deems translations to be in conflict.
Understanding is relevant. The starting point is that two marks must be understood if they are potentially to be considered to have identical/similar conceptual meanings (but in different languages). If there is no relevant public in the EU who will understand the meanings of both marks, then the fact that they mean the same/similar things but in different languages is irrelevant, and the marks are considered either conceptually different or neutral (depending on the precise circumstances).
- Example: An earlier Spanish registration consisting of a horseback rider and the words EL LANCERO was held to be conceptually different to a later EUTM application for the words LE LANCIER (which means the same but in French) as the General Court concluded that the average Spanish consumer only had a basic knowledge of French and would not understand the word LE LANCIER or equate it with the Spanish equivalent word. The marks were therefore deemed conceptually different.
It's not just the official EU languages that are understood. Brand owners must consider not only the 24 official EU languages but also widely understood languages like Russian. Languages spoken by significant EU populations are relevant and can be deemed to be understood by the average consumer in the EU.
- Example: The EU General Court recently considered whether there is a likelihood of confusion between an earlier registration for МАЙСКИЙ ЧАЙ (which translates from Russian to English as "MAY TEA"), and later figurative registrations which include the words "MAY TEA" (in English), both covering tea. It held that both marks would be understood by the Latvian public (who understand both Russian and English). Nonetheless, there was no likelihood of confusion in this particular case (more here).
Conceptual similarity (without aural/visual similarity) is generally not enough. Assuming that the meaning of two marks is understood by a relevant public in the EU, it does not mean that the marks will be considered to be in conflict. Generally, the fact that two marks are conceptually identical/similar is not enough for a finding that there is a likelihood of confusion (and sometimes not enough for them even to be held similar overall).
- Example: An opposition to an EUTM application for HAI brought on the basis of an earlier registration for SHARK for the same goods (beverages) failed even though HAI means "shark" in German and Finnish (and would have been understood by relevant consumers). The lack of visual and aural similarity was sufficient for a finding of no likelihood of confusion.
But there can be a likelihood of confusion if the translations also share visual/aural similarities. Conceptual similarity focuses on the meaning of a mark. Where there are also visual and/or aural similarities between the translations, there can be a finding of similarity overall and potentially a likelihood of confusion.
- Example: An EUTM application for a logo incorporating 5 OCEANS was successfully opposed by the proprietor of the earlier Spanish mark CINCO OCEANOS. The marks were conceptually identical and shared some degree of visual and aural similarity.
