Rocky opposition knocked out by concept of trademark neutralisation
Oppositions to EU trademark applications that included the word ‘Rocky’ have been rejected on the grounds that any likelihood of confusion with the titular film character has been neutralised by the obvious conceptual differences. Pierre Coppin explains the concept of trademark neutralisation in the context of the Rocky ruling.
Two EU trademark applications – one for the word mark ‘Rocky’ and the other for a graphic mark (see image below, right) – were filed in class 32 (non-alcoholic beverages and beers) in February 2020.The subsequent oppositions to these applications were rejected by the EUIPO Opposition Division at the end of 2021:
- Not on the basis that the goods were not identical or similar (class 32);
- Not on the grounds of lack of similarity, as the similarities were established between the signs to a medium degree phonetically and a low degree visually;
- But because of the conceptual difference arising from the public's knowledge of the film character ‘Rocky’.
The concept of trademark neutralisation
It is a well-established principle in case law from the Court of Justice of the European Union (CJEU) that any conceptual differences between two signs may “neutralise” any visual and phonetic similarities between them. This can apply provided that at least one of those signs has, from the perspective of the relevant public, a clear and determinate meaning, such that the public is likely to grasp it directly.
In this context, the EU General Court and the CJEU have held that a trademark application may be conceptually different where it will be associated by the public with the name of a famous person and that such a difference may, in certain circumstances, neutralise the visual and phonetic similarities of the signs being compared.
This was the case firstly in the judgements of the EU General Court No T554/14 of 26 April 2018 and of the CJEU No 449/18 P – C474/18 P of 17 September 2020, which rejected the likelihood of confusion between the opposing trademark application (pictured below, left) and the earlier EU trademarks MASSI. Rejection was on the ground of the conceptual difference created by the association, by a significant part of the relevant public, of the term 'MESSI' with the name of the famous football player, despite the visual/phonetic similarities of the signs and the identity/similarity of the clothing and protective equipment goods respectively covered.
More recently, the EU General Court ruled in judgement No 368/20 of 16 June 2021 that the trademark application MILEY CYRUS "has a clear and definite semantic content for the relevant public since it refers to a public figure of international renown [singer and actress] who is known to most informed, reasonably observant, and circumspect persons", to create conceptual differences which may neutralise the visual and phonetic similarities with the earlier trademark (see below, right) for the relevant public.
The EU concept of trademark neutralisation is not without limits, however. For example, the EUIPO ruled in an opposition decision SPARK/STARCK in 2021 that the judgement of the EU General Court No. T554/14 (MASSI/MESSI) cannot be applied to this opposition in that "the alleged reputation of the applicant, Philippe Starck, as a design star cannot automatically be extended to the word mark 'STARCK'”.
Applying the concept to a fictional character
In the case of the two EU trademark applications for the Rocky word mark and logo, the conceptual reference of the signs was not to a real-life personality, like the singer or footballer, but to a fictional character.
According to the EUIPO Opposition Division, however, the vast majority of the relevant public (if not all) will perceive the element ‘Rocky’ as the main character of the internationally renowned film series, namely the boxer Rocky Balboa depicted by Sylvester Stallone.
This clear and specific reference (reinforced by the graphic of a boxer in the semi-figurative sign) was considered sufficient to counterbalance the visual/phonetic similarities between the signs and to help to rule out the likelihood of confusion with the earlier mark (which also had a difference in the number of letters).
We may question the limit of the jurisprudential principle of trademark neutralisation, insofar as the reference in these opposition decisions concerns the film culture of the public consuming soft drinks and beer. But, in any event, these decisions show that the character ‘Rocky’ does not lack punch, more than 45 years after the release of the first film.
In this context, it may be advisable to review the film classics before acting against a conflicting trademark application or, at the minimum, discuss with your trademark attorney the potential success of opposing any trademark where conceptual difference may apply.
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Pierre Coppin is a Trademark Attorney at Novagraaf in France.