Publications > Perception of composite names - Eric Cantona Canto

A Request by Novartis Seeds BV for Protection in the United Kingdom of International Trade Mark No. 726627 in Class 31. Decision No O-021-06 of the Appointed Person, Geoffrey Hobbs QC, 16 January 2006

Background

This appeal decision related to an opposition filed on behalf of the French ex-Manchester United footballer Eric Cantona, also nicknamed 'Canto', holder of the CTM Registration 997411 for the word mark 'ERIC CANTONA CANTO' for a plethora of goods and services, including 'seeds, natural plants and flowers' in class 31. The opposition was to protection in the UK of an International Registration for the word mark 'CANTO' held by a seeds company. The goods that were subject to protection were 'flower seeds, but not including seeds for human consumption', also in class 31. The grounds of opposition were based on s.5 (2)(b) of TMA (1994) given that the goods were identical and the marks similar and this would be likely to lead to confusion. The Registry accepted the opposition and refused protection. The matter then went to the Appointed Person on appeal.

The Registry

The Registry had argued in first refusing protection that the present clash was analogous to the situation that was determined by the High Court in the BULOVA opposition case (Bulova Accutron [1969] RPC 102) and whose reasoning should again be applied. The goods in that case were identical (wrist watches), the opponent being the proprietors of the mark ACCURIST, the applicant being the Bulova Watch company of Toronto. In short, it was held at that time that ACCUTRON would be perceived to have an independent existence from BULOVA, which in turn would be understood to be either another trade mark or a house mark. The comparison of marks was thus focused on the ACCUTRON element, and this was held to be confusingly similar to ACCURIST, especially given imperfect recollection. Applying this to the CANTO case, the Registry considered the ERIC CANTONA part of the three word CTM mark ERIC CANTONA CANTO to act as the house mark element (being the name of the footballer), the secondary sign CANTO acting as a secondary indicator of origin and separate trade mark element. Allowing the application would be like allowing an identical secondary trade mark without the house mark, which would not 'be right' and would lead to confusion.

Decision

The Appointed Person, however, came to quite a different conclusion despite affirming that the BULOVA case was still good law. After all, the ECJ had recently, in Case C-120/04 THOMSON LIFE, paragraphs 29 & 37, confirmed that the overall impression conveyed to the relevant public by a composite trade mark may in certain circumstances be dominated by one or more of its components. In particular, where goods or services were identical, if a mark with normal distinctiveness and which alone did not 'determine the overall impression conveyed by the composite sign' was juxtaposed to a company name, it would play an independent distinctive role therein. In the present case, however, the Appointed Person did not consider the facts of the case to merit the application of said principles.

The disagreement hinged around whether the tripartite word mark was to be seen as 'ERIC CANTONA' as house mark, with 'CANTO' being an invented conceptually autonomous attachment (corresponding to the product or trade mark element). On the contrary, it was held that CANTO would actually be perceived by the average consumer as being a nickname - echoeing the first five letters of CANTONA. As such it did not perform an independent distinctive role within the composite mark but merely doubled the name with a nickname.

Furthermore, the conceptual differences between the composite mark (the football player) and CANTO as applied to seedstuffs (the word having no apparent meaning) meant that the marks could well co-exist in the marketplace without giving rise to a likelihood of confusion. This particular approach in conceptual comparison was affirmed in the very recent PICASSO case (Case C-361/04P Ruiz-Picasso v OHIM, 12 January 2006, paragraphs 20 to 23). The Registrar was wrong, therefore, to refuse protection.

This article first appeared in the April 2006 issue of the ITMA Review