Introduction

In the realm of trade mark law, the assessment of potential confusion between marks is a critical component of legal proceedings. A recent decision by the General Court (Decision of 18 September 2024, T‑1099/23) provides an insightful example of how well-known facts (in this case conceptual differences between marks) can be addressed by a Board of Appeal, even when such differences are not explicitly raised by the parties involved.

Background of the Case

The opposition against the trade mark application for "LEMOON", filed in classes 32 and 33, which relied on the earlier trade mark "LENNON", registered in class 33, was initially partially successful. The EUIPO found likelihood of confusion between the two marks based on visual and phonetic similarity. However, upon appeal, the Board of Appeal reversed this decision, concluding that no such risk existed in particular in consideration of the conceptual differences between the marks. 

A pivotal aspect of the Board of Appeal's decision was its consideration of the conceptual differences between the two marks. The Board of Appeal found that the mark "LEMOON" could evoke the concepts of "lemon" or "moon" for those familiar with English, while "LENNON" was associated with the famous music artist John Lennon. This conceptual difference was deemed sufficient to neutralise any visual and phonetic similarities between the marks.

Addressing Unraised Issues 

Notably, the Board of Appeal addressed these conceptual differences even though the applicant had not explicitly raised this argument when defending his application. In particular the Board invoked a well-known fact - that ‘Lennon’ referred to a famous musician - without it being presented by the applicant.

The opponent submitted that his right to be heard had been violated by this course of action, since he was not able to counter-argue against this point. 

However, the General Court supported the Board’s approach, emphasising that the Board is obligated to ensure the correct application of the relevant regulations, which includes considering all necessary legal questions, even if not raised by the parties. This approach aligns with the EUIPO's mandate to ensure a comprehensive evaluation of likelihood of confusion, taking into account all relevant factors, including conceptual differences. This means that the criteria for applying a relative ground of refusal - which may include the underlying well-known facts - are a question of law to be assessed by the EUIPO and not facts which the parties need to supply.

The decision highlights the Board of Appeal's duty to independently assess all relevant aspects of a case which includes the possibility to invoke well-known facts. Furthermore, the Board neither was under obligation to inform the parties that it was going to adopt a position different from that adopted by the Opposition Division, nor to give the opportunity to comment on this position. The right to be heard only extends to the elements of fact or law which form the basis of the decision.

Conclusion

This case serves as a reminder to legal practitioners of the comprehensive nature of trade mark assessments. Even if the other side doesn't raise certain issues, it's crucial to address them early on. If these issues are only brought up during an appeal, you might not get another chance to respond.

The EUIPO can make decisions based on widely recognised facts, even if the parties involved haven't mentioned them, and they don't need to prove these facts are correct. To challenge such a fact, you must provide detailed arguments; simply denying it isn't enough (see GC, T-443/21, para. 25 et seq. – YOGA ALLIANCE).