In the 2022 lawsuit ecobell (fig.) v Ecobull,[1] the EUIPO Board of Appeal, in upholding the decision of the Cancellation Division on the similarity between the trademarks, clarified that a uniform knowledge of English cannot be presumed throughout the entire European Union. Therefore, when comparing two signs, only a modest knowledge of English should be used as standard.
For instance, the EUIPO has held that, in some EU countries, it cannot be assumed that the relevant public will understand the meaning of English words that are particularly refined, namely that belong to a level higher than mere B1. In the case at hand, the EUIPO considered that the words “bull” and “bell” were not understandable by a consumer with a modest level of English (B1).
In support of this assertion, the EUIPO cites, among others, the EF “English Proficiency Index” (its latest version is dated November 8th, 2023, EF EPI 2023 – EF English Proficiency Index) which demonstrates that some EU countries (e.g., France, Spain, and Italy), have only a modest knowledge of English, i.e., lower or equal to the B1 level.
In light of this decision, questions arise about the possible implications of a limited English knowledge in trademark law.
1. Conceptual comparison
Firstly, in assessing the similarity between two trademarks, containing similar but not identical English terms, beyond the mere B1 level, language proficiency will impact the conceptual comparison between the signs. For instance, if both terms are not understandable by the consumer, the trademarks will not be conceptually comparable, according to the prevailing EU case law. Conversely, if the meaning of only one of the two terms is understood by the public, they will have to be judged dissimilar on a conceptual level.
2. Distinctiveness
Secondly, the lack of English proficiency may influence the degree of distinctiveness of a trademark, potentially increasing the extent of its protection.
In fact, the use as a trademark of words that are clear and understandable to the public, pertaining to the economic sectors of the goods and services covered by the trademark itself (e.g., using “gym” for sports training) limits the degree of distinctiveness of the sign, making it “weak” and, consequently, restricts its protection to only identical or nearly identical marks.
However, if such words belonged to a B2 level of a foreign language (e.g., “endurance” for sports training), their comprehension by consumers could not be generally presumed, and, consequently, the sign would preserve normal distinctive character and protection. In conclusion, the public’s language proficiency exercises an influence on the distinctive character of trademarks, having an impact on both their validity and the extent of their protection, and, subsequently, on the likelihood of confusion with other trademarks.
Nevertheless, these assumptions must be tempered by the specific consideration of the economic sector to which the trademark refers and, respectively, by a reflection of the audience to which it is addressed.
Indeed, a proficient understanding of English is to be presumed, regardless of the European state involved, in those economic sectors where English has become so prominent that knowledge of both its elementary and technical terms cannot be disregarded. For example, the EUIPO had already asserted that, in the scientific and IT sectors, English words are presumed to be well known by the target audience, which consists mainly of experts, who cannot ignore their comprehension (see in Gateway v Activity Media Gateway, “gateway” in the IT sector).
However, if the products and services of the two trademarks are directed to an audience of both professionals and “laymen”, distinctiveness and likelihood of confusion will have to be assessed in relation to the non-professional audience only.
3. Future scenarios related to the spread of English knowledge
Concerning trademark distinctiveness, we could wonder what could happen to all those trademarks consisting of non-basic English words when people will acquire a deeper knowledge of English, even in sectors where its comprehension is currently modest.
In the best-case scenario, trademarks that today preserve distinctiveness because their terms are assumed not to be understood by the public, will lose their distinctive character with the consequence that they will become “weak” trademarks. Whereas, in the worst-case scenario, such trademarks could lapse as they become “descriptive,” thereby nullifying all investments made by their owners to promote and protect them.
To prevent such a scenario, the hope for these trademarks is to acquire enhanced distinctiveness through their use and, namely, gain renown EU territories before English proficiency becomes uniformly widespread throughout all member states. Only in this way could they avoid the otherwise detrimental consequences of an increasingly prevalent globalization and internationalization that carries a growing knowledge of the English language.
A virtuous example of this is the well-known sunglasses brand “Ray-Ban.” Indeed, according to the Cambridge dictionary, both words constituting the trademark belong to the English B1 level and refer to protection from sun’s rays; hence, ordinarily, the trademark should have a reduced distinctiveness and, consequently, be considered “weak.” However, Ray-Ban has acquired such renown in the European territory that, when typing these words into an English translator, they are not translated but continue to identify/qualify the brand itself!
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[1] 11/09/2023, R 2539/2022-2, ecobell (fig.) / Ecobull
