The General Court reverses EUIPO’s decision and rules in favour of Alpha Spirit by confirming the concession of “THE ONLY ONE” brand by α alpha spirit” against Nestlé’s “ONE” brand.

 

In the present case, the TG states that the mark applied for is composed of the terms THE ONLY ONE by α alpha spirit wild and perfect, being a complex mark composed of both verbal and figurative elements. In particular, it is composed of the three word elements ‘THE ONLY ONE’, in black and white capital letters, placed on top of each other and separated by small lines of dots. The other word elements ‘by α’ are placed at the bottom right, the word ‘by’ is in a different font of a slightly smaller size, while the letter ‘α’ is the same size as the words ‘THE ONLY ONE’, and is in red. The elements of the word “ALPHA SPIRIT” are placed below in a smaller font and the word “ALPHA” is in red. Below that, in a very small font compared to the words “THE ONLY ONE” are the elements of the word “WILD AND PERFECT”.

The earlier mark is a word mark consisting of the single word ‘ONE’.

Alpha Spirit maintained throughout the proceedings that the marks in question are not visually, phonetically or conceptually similar, in particular since the word ‘THE ONLY ONE’ does not play an independent role and no element of the mark applied for plays a secondary role.

 Dominant elements of the mark applied for

From a visual point of view, the General Court notes that, although it is clear from a comparison of the signs in question that they both contain the word ‘ONE’, the signs are different as regards the other word and figurative elements.

In that regard, it must be borne in mind that the visual impression produced by two marks sharing a common element may be different, in particular when the comparison relates to a word mark, such as the earlier mark, and a mark composed of word and figurative elements, such as the mark applied for (see, to that effect, judgment of 8 December 2011 in Case T-26/01 Aktieselskabet af 21. November 2001 v OHIM – Parfums Givenchy (only givenchy), T-586/10, not published, EU:T:2011:722, paragraph 33 and the case-law cited).

While the visual impression of the earlier mark is determined by the word ‘ONE’, which is its only component, the visual impression of the mark applied for is determined by seven words, ‘THE ONLY ONE by α alpha spirit’, the last three words being insignificant, ‘wild and perfect’. The visual impression of the mark applied for differs from that of the earlier mark by its length, the latter being composed of the sole element ‘ONE’. This leads inexorably to a different visual impression.

Secondly, the Court also argues that the figurative elements of the mark applied for, the black square in which the word elements are written and the letter ‘α’ and the word ‘alpha’ in red, contribute to the visual differentiation of the marks in question.

In the present case, the Court concludes that the overall visual impression of the two marks which will be retained by consumers will nevertheless be very different despite the presence of the common element ‘ONE’ and considers that the Board of Appeal made an error of assessment in finding that there was a low degree of similarity between the marks in question. Those marks are visually different.

 

Phonetic comparison.

The Board also notes that the earlier mark is composed of a single word, whereas the mark applied for is composed of 10 words, seven of which are not negligible. Thus, the seven words ‘THE ONLY ONE by α alpha spirit’ are substantially different from the single word ‘ONE’ which makes up the earlier mark.

Furthermore, since the element ‘THE ONLY ONE’ is not such as to render the other elements of the mark applied for negligible, it cannot be concluded that the average consumer, who is reasonably well informed and reasonably observant and circumspect, will systematically disregard the other words making up the mark applied for. Therefore, in the present case, there is no reason to assume that the element ‘by α alpha spirit’ in the mark applied for will not be pronounced.

It follows that, despite the presence of the element ‘ONE’ in the two marks in question, the fact that there are at least six other words which can be pronounced in the mark applied for serves to differentiate it from the earlier mark.

It must therefore be concluded that the degree of phonetic similarity between the marks in question, which the Board of Appeal found to be lower than average, must be regarded as low.

 

Conceptual comparison

In that regard, the Board of Appeal’s conclusion that the word ‘ONE’ will be universally understood as a number by the relevant public must be confirmed. However, the Board of Appeal’s conclusion that the word ‘ONE’ would be understood as designating a person or thing consisting of a single person or unit is incorrect. The word ‘ONE’ taken in isolation means the number one and does not designate other meanings. To designate other meanings, such as the uniqueness of a person or thing, the word “one” must be used with other words such as in the expressions “the one”, “the only” or “the only”.

The arguments of the EUIPO and the intervener that the relevant non-English-speaking public will not understand the term ‘THE ONLY ONE’ should also be rejected. The latter expression, which is part of the basic vocabulary, can be understood by that part of the relevant public as ‘THE ONLY ONE’.

Furthermore, the combination of the element ‘ONE’ and the elements ‘THE ONLY ONE’ and ‘by α alpha spirit’ means that those elements will be perceived as a single expression which must be considered as a whole.

Therefore, the concepts suggested or conveyed by the words “one” in the earlier mark and “the only one by α alpha spirit” in the mark applied for must be considered to be different.

The Court concludes that the visual difference between the earlier mark ONE and the mark applied for THE ONLY ONE by α alpha spirit wild and poerfect will be clearly perceived by the average consumer, even if only the part of the mark applied for which is negligible is taken into account.

Consequently, in the present case, the visual and conceptual difference and the low degree of phonetic similarity will prevent consumers from believing that the goods in question, when sold under the marks in question, come from the same undertaking or from economically-linked undertakings.

That conclusion cannot be called into question by the arguments of EUIPO and the intervener that the earlier mark ONE has an enhanced distinctiveness and reputation which outweighs any possible weakening of the inherent distinctiveness of the earlier mark.

We must conclude from the importance of this decision, in the sense that the General Court gives greater weight to the objective purchase of the elements that make up the marks against an allegedly reputational character that attempts to exceed the limits of protection established by general regulations.