Neutralization in European trademark conflicts is not a general rule
The concept of ‘neutralization’ is becoming a general principle rather than an exception to the rule. This can be detrimental to owners of trademarks, even famous trademarks.
When comparing trademarks in a conflict, the test whether they are (to some extent) similar is particular. Only the instrinsic characteristics of each trademark/sign are compared: the particularities of each sign without taking note of the goods and services concerned and the way these particular goods or services are marketed. Also, the repute of the invoked marks is not taken into account in this similarity test. Add to this that there seems a tendency with EUIPO and the Benelux Bureau (BOIP) to apply neutralization. The similarity test in trademark conflicts seems to have departed from how real consumers actually perceive the marks. This was a recurring subject at the MARQUES Annual Meeting in Berlin.
Neutralization is the doctrine that some similarity in a visual and/or aural comparison may be taken away, if at least one of those signs has a clear, specific and immediate meaning to the public (ECJ: Les Éditions Albert René). Such clear meaning may ‘neutralize’ the visual or aural similarity, so that in an overall comparison the two signs are deemed dissimilar. In such event, an infringement test based on all circumstances (including repute of the older mark, market circumstances, etc) is not even performed.
This can have far-going consequences. Take APPLE, an extremely famous trademark for, a.o., mobile phones. From a purely linguistic perspective, APPLE immediately evokes the concept of a particular fruit, while probably everyone knows the English meaning of it. Yet does this imply that the average consumer who sees EPPLA would not make a link with APPLE at all, as APPLE has a clear meaning? Or should there at least be a possibility for APPLE to show that the actual public first thinks of a mobile device rather than of a fruit, so that it can argue that APPLE does not have one clear meaning to the average consumer? Case law from the ECJ is not promising. So far, the EUIPO Board of Appeal did not neutralize while EUIPO did.
This neutralization should not become some hard and fast rule in European trademark conflicts (in the US it does not even exist). There must always be room for nuance, while neutralization should be limited to exceptional circumstances as the ECJ expressed in the Equivalenza case. I hold that if this doctrine of neutralization is applied, the office or court doing so should at least clearly explain why the situation is exceptional. I see room for arguments to the opposite. The last word about neutralization has not been said yet.
Maarten Haak