In its judgment of June 25 2015 (Case C-147/14) the Court of Justice intervened on the question concerning the evaluation of the likelihood of confusion between marks composed of Arabic words.
The marks in question were two Community trademarks (now European Union Trademarks), for which the violation was claimed, and a Benelux trademark.
All the signs were composed of Arabic words, represented both in Latin and in Arabic characters. The words in conflict were “EL BAINA” on one side (the contested Benelux trademark, claiming protection for products of classes 29 and 30) and “EL BENNA” (classes 29, 30 and 32 ) and “EL BNINA” (classes 29 and 30) on the other side (earlier Community trademarks).
The importance of the relevant public when assessing the similarity between the trademarks
The national Court observed that the goods covered by the marks in question were all products “Halal”, prepared in accordance with a ritual prescribed by the Muslim religion and, consequently, mainly destined to a Muslim public. On that basis, the national Court concluded that the relevant public should be identified in Muslim consumers of Arab origin, who have at least a basic knowledge of written Arabic language.The main point was to determine whether, in view of the similarity of the signs under a visual point of view, it was necessary to give importance to the aurally (different pronunciation) and conceptually (different meaning) differences of the words in question in the Arabic language, although Arabic is not a language of any of the EU Countries.
In order to understand the above, it was necessary to decide the right interpretation of Article 9, paragraph 1, lett.b) of Community Trademark Regulation No. 207/2009, which states that
“A Community trademark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign where, because of its identity with, or similarity to, the Community trademark and the identity or similarity of the goods or services covered by the Community trademark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trademark”.
More specifically, the National Court decided to refer the following question to the Court of Justice for a preliminary ruling:
“Must Article 9(1)(b) of Regulation No 207/20098 be interpreted as meaning that, in the assessment of the likelihood of confusion between a Community trademark in which an Arabic word is dominant and a sign in which a different, but visually similar, Arabic word is dominant, the difference in pronunciation and meaning between those words may, or even must, be examined and taken into account by the competent courts of the member States, even though Arabic is not an official language of the European Union or of the Member States?”
What the court of justice decided about the similarity between trademarks with arabic words
The Court of Justice decided as follows:
“Article 9, (1)(b) of Council Regulation No 207/2009 of 26 February 2009 on the Community trademark must be interpreted as meaning that, in order to assess the likelihood of confusion that may exist between a Community trademark and a sign which cover identical or similar goods and which both contain a dominant Arabic word in Latin and Arabic script, those words being visually similar, in circumstances where the relevant public for the Community trademark and for the sign at issue has a basic knowledge of written Arabic, the meaning and pronunciation of those words must be taken into account”.