Background to the Dispute

In April 2015, Entertainment One UK Ltd and Astley Baker Davies, proprietors of EU figurative trade mark registration number 10186261 (the “Peppa Pig Mark”) (registered in Nice Classification 25 corresponding to ‘Clothing, footwear, headgear’) filed an application for a declaration of invalidity of Xianhao Pan’s EU figurative trade mark registration number 11775509 (the “Tobbia Mark”) (also registered in Class 25) – both marks pictured above.

Although their invalidity application was initially denied, on appeal, the First Board of Appeal of EUIPO found that in the eyes of general public of the European Union, the marks were registered for identical goods, the marks  were visually similar, there was a phonetic correlation between the words ‘Peppa’ and ‘Tobbia’ and, lastly, both marks were conceptually similar to an average degree. In light of these visual and conceptual similarities, there existed a likelihood of confusion between the two marks and the application for a declaration of invalidity was upheld.

Appeal

In November 2017 Xianhao Pan appealed the decision of the First Board of Appeal of EUIPO to invalidate his Tobbia Mark and the General Court recently handed down its judgment. Xianhao Pan relied on four pleas in law discussed below; all of which were rejected by the General Court. Three of the pleas in law related to procedural issues and one related to substantive trade mark law.

No similarity and therefore no confusion

Pan alleged that the Board of Appeal had erred both in its comparison of similarity of the marks and in its assessment of likelihood of confusion, therefore failing to comply with Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark.

Pan argued that the marks were not visually similar because the Peppa Pig Mark portrays a child’s ‘elementary perception’ of a pig whereas the Tobbia Mark was not elementary and depicts a tapir. The General Court held that the Board of Appeal had rightfully found that the marks represented closely similar illustrations of a pig and that consideration of whether the marks were tapirs or pigs did not affect their visual similarity.

Pan also argued that there was no phonetic similarity between. the marks. The General Court held that the Board of Appeal was correct to note the phonetic similarities between the words which were both disyllabic and contained a double consonant. Lastly, Pan argued that the marks were conceptually different because the Peppa Pig Mark is a female pig, whereas the Tobbia Mark is a male tapir.

The General Court held that it is unlikely that the general public would believe the Tobbia Mark to be a tapir, given that both marks contained the regular characteristics of a pig. Also, this visual similarity was more important than the phonetic and conceptual similarities.  In dismissing this plea, the General Court held that the Board of Appeal did not err in finding that the marks were similar and in turn, a likelihood of confusion.

Infringement of the period for bringing an appeal

Pan alleged that the First Board of Appeal of EUIPO did not properly consider that the appeal in 2016 was filed two months late. The General Court dismissed this plea. Although the notice of appeal must be filed within two months of the date of notification of the decision, the written statement of grounds must be filed within four months. While the First Board of Appeal of EUIPO did not explicitly address the dates of filing, the fact it proceeded with the appeal infers that it considered the appeal admissible.

The documents submitted before the First Board of Appeal were inadmissible

Pan submitted that the First Board of Appeal of EUIPO had considered documents containing evidence from Italian customs which Entertainment One UK Ltd and Astley Baker Davies Ltd had submitted for the first time before it and were therefore inadmissible. In dismissing this plea, the General Court held that the Board of Appeal’s decision was based exclusively on a comparison between the marks and resulting likelihood of confusion – not the allegedly new evidence complained of.

Failure of the Board of Appeal to state the reasons for its decision

Pan alleged that the First Board of Appeal of EUIPO failed to state the reasons for its decision to declare the Tobbia Mark invalid. In dismissing this plea, the General Court held that there is no obligation on the First Board of Appeal of EUIPO to highlight all of the incorrect aspects of the first-instance decision. It was sufficient to state the reasons on which it based its own decision, which it had done in a section of its decision entitled ‘Reasons‘. 

The General Court dismissed the appeal in its entirety.

Conclusion

This decision does not come as any great surprise given the obvious and confusing similarities between the two marks. It serves as a reminder to EUTM applicants that where figurative elements of marks are extremely similar (particularly in position and size) to the point that consumers might overlook the minute differences, an application may fail or be challenged on relative grounds.

Needless to say… Peppa’s creators are on the pig’s back!

Contributed by: Florence Meagher

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