CJEU: re taking into consideration the use of a language other than an official language of the EU when assessing likelihood of confusion

Following a reference for a preliminary ruling from the Belgian court of appeals the CJEU decided on 25.06.2015 whether the use of a language other than an official language of the EU has to be taken into consideration when assessing the likelihood of confusion (C-147/14). The preliminary ruling concerns the interpretation of Art. 9 (1)(b) of the Community Trademark Regulation (CTMR).

In the underlying case the plaintiff is the proprietor of the two Community Trademarks (CTM) “El Benna” and “El Bnina”, each registered among others for meat, fish, sugar, bread, beers and non-alcoholic beverages. The defendant filed the Benelux trademark “El Baina” for identical or at least similar trademarks and used it accordingly. The goods marketed by both the plaintiff and by the defendant are “halal” products mainly intended for a Muslim public. The three signs in question consist mainly of the Arabic terms “El Benna” (“taste”), “El Bnina“ (“softness“) and „El Baina“ (“sight“), while the marks each contain the words both in Latin and an Arabic script.

The Belgian Court asked the CJEU whether, when assessing the likelihood of confusion between a CTM in which an Arabic word is dominant and a sign in which a different, but visually similar Arabic word is dominant, the pronunciation and meaning of those words must be taken into account, even though Arabic is not an official language of the EU.

The CJEU first points out that the likelihood of confusion must be assessed by reference to the perception of the relevant public. The Belgian Court determined this to be mainly Muslim consumers of Arabic origin who have a basic knowledge of the Arabic language. The CJEU also emphasizes that the existence of likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the particular case, and that such assessment requires that the overall impression made by the signs are taken into account.

Therefore, the CJEU states that when assessing the likelihood of confusion between signs which both contain a dominant Arabic word, the meaning and pronunciation of those words must be taken into account even though Arabic is not an official language of the EU, provided that the relevant public in the EU has a basic knowledge of the Arabic language.