The General Court has ruled in favour of Peppa Pig following a lengthy court battle about the validity of the “Tobbia” mark and its similarities to the well-known animated character.
From 2012, Entertainment One UK Ltd and Astley Baker Davies Ltd have held the figurative trade mark for Peppa Pig in Class 25 of the Nice Agreement for clothing, footwear and headgear. In 2013 Mr Xianho Pan also successfully registered a figurative EU Trademark (EUTM) also in Class 25 of the Nice Agreement. The “Tobbia” mark supposedly shows a tapir head on a human body with the text “TOBBIA” underneath.
In 2015 Entertainment One brought an invalidity action against Mr Pan based on the fact that the two marks were confusingly similar – and as such the TOBBIA trade mark was invalid.
The applicable law at that time was Article 53(1)(a) of Regulation 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), alongside Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). The law states that a registered EUTM must be declared invalid, if due to its identity with the earlier mark and its similarities with the goods and/or services provided, there is a likelihood that it would be confusing to the public in the region that the trademark protection is active.
The EUIPO Cancellation Division ruled, to some surprise, that the marks were not confusing similar. However, Entertainment One successfully appealed in 2017 and the “Tobbia” mark was declared invalid– with the court finding that the marks were visually, phonetically and conceptually similar. Mr Pan launched an appeal and on 21st March 2019 the General Court of the EU (GC) made a definitive ruling on the matter.
In the judgment a number of findings were discussed including the comparison of the marks. Mr Pan argued that the Court of Appeal had not considered the marks in their entirety and had focused on specific elements instead, mainly the heads of the animals.
The GC noted that the visual, phonetic or conceptual similarities needs to be assessed on the overall impression given by the marks. The average consumers perception is an important aspect of the global assessment in likelihood of confusion and the average consumer is likely to view a mark in its entirety rather than specific elements (OHIM v Shaker).
From a visual perspective Mr Pan maintained that that the Peppa Pig mark followed the style of the “elementary perception of a child”  whilst the Tobbia mark had graphical features that are not elementary but tend to humanize the tapir animal. It was also argued that the TOBBIA mark is in colour – whereas Peppa Pig is black and white.
The GC continued to give a detailed description of both of the marks, discussing the shape and direction of the snout and the features, and concluded, that taking the marks in their entirety, that they are visually similar and despite the fact that the marks showed different animals – that this would not affect the way that the public viewed the marks. The GC acknowledged some differences however concluded that these did not outweigh the similarities.
From a phonetic perspective, the GC identified the correlation between the “pp” and “bb” in the marks text highlighting that that both of those elements are disyllabic words containing the repetition of a strong consonant, namely the consonant ‘p’ in the earlier mark and the consonant ‘b’ in the contested mark.
The applicant also argued that from a conceptual standpoint the marks are also different. Whilst Peppa Pig is a female Pig – the mark TOBBIA refers to a male tapir. The GC found that the average consumer would immediately associate both marks with a pig and found that the public would identify the elements ‘peppa’ and ‘tobbia’ as proper nouns. As such – the GC’s conclusion was that the Board of Appeal did not err in finding that the marks at issue are similar.
Regarding the global assessment of the likelihood of confusion – Mr Pan maintained that the Board of Appeal did not consider the likelihood of confusion globally. The GC cited the case of Laboratorios RTB v OHIM and reiterated that the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the marks and goods or services in question whilst also taking into account all factors relevant to the circumstances of the case. The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion.
The GC held that the Board of Appeal had carried out a global assessment of the relevant factors. It found that, in view of the identity between the goods in Class 25 and the visual and conceptual similarities between the marks, the differences were not sufficient to dispel any likelihood of confusion on the part of the relevant public and therefore the Board of Appeal had assessed the likelihood of confusion globally.
The GC’s decision is not surprising given the marks are remarkably similar. However, looking at the individual elements the similarities become less obvious. Nevertheless, after a lengthy battle, it is reassuring to have an outcome which utilise common sense with regards to public perception of marks.