A few months ago, the EUIPO, through its Boards of Appeal, published a report analysing the impact of animal representations in distinctive signs and their relevance in the assessment of the likelihood of confusion.
The underlying question is straightforward: can someone “appropriate” the image of an animal to distinguish their products? The answer from European case law is clear: trademark law does not protect abstract ideas or generic concepts – such as the image of a lion – but rather specific graphic representations of those ideas.
A review of the case law of the General Court and the CJEU allows us to draw several relevant conclusions:
- Case-by-case nature of the comparison. The assessment of similarity must be carried out in a global and concrete manner, taking into account elements such as stylisation, line, orientation or graphic context, and not solely the coincidence in the animal motif. Thus, the green crocodile of Lacoste is not the same as a crocodile represented by another footwear brand such as Crocs.
- Insufficiency of mere conceptual similarity. The coincidence in the reference to the same animal, by itself, is not sufficient to establish a likelihood of confusion, unless the earlier mark enjoys particularly high distinctiveness. For instance, the iconic roaring lion of Metro-Goldwyn-Mayer cannot automatically prevent the registration of a lion in a different style, such as the one used by ING for financial services.
- Weakening through widespread use. Certain motifs – lions, bulls, felines, frequently used with decorative function in sectors such as fashion, cosmetics or sports, are generally considered to have limited distinctive strength. This is the case of the Osborne bulls compared with other stylised bull designs, such as that of Lamborghini.
- Exceptionality of phonetic comparison. Only when the representation immediately and unequivocally refers to a specific name (as in the case of “PUMA”) can an aural assessment be undertaken. A good example can be found in the jaguar: the automotive brand Jaguar cannot prevent the use of a jaguar feline in other fields, such as sports equipment by Slazenger, provided that the graphic representations are sufficiently differentiated.
In short, the report contributes to providing legal certainty in an area where, due to the recurrence of these elements in both physical and digital commerce, the likelihood of confusion must be assessed with particular caution.
Paula Cerrillo
IP Counsel
