There are several criteria that must be taken into consideration before a trademark is refused registration due to similarity with a previously registered mark, the General Court has recently asserted. These include the visual, phonetic and conceptual similarity of the two marks as well as the likelihood of confusion for the public at large.
A trademark that is registered as an EU trademark is afforded protection in all EU member states. This means that the owner of a mark that has been registered previously in any one member state or as an EU trademark, can oppose the registration of another mark on the basis of certain grounds. These grounds namely relate to the fact that the trademark for which registration is being sought is identical with the earlier trademark and the goods or services for which registration is applied for are identical with those for which the earlier trademark is protected.
Similarly, an opposition can be filed if due to the mark’s identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered by the two trademarks, there exists a likelihood of confusion for the public. If these criteria are fulfilled, the European Union’s Intellectual Property Office (EUIPO) will then refuse the registration of the mark as an EU trademark.
The facts of this case were briefly as follows: An Italian company sought to register the figurative mark ‘Chiara Ferragni’ as an EU trademark for certain goods in Classes 18 and 25. A Dutch company filed a notice of opposition to the registration of this figurative mark, alleging a likelihood of confusion with the earlier word mark ‘Chiara’, registered in Benelux in 2015 for goods in Class 25. The EUIPO refused to register the figurative mark ‘Chiara Ferragni’ as an EU trademark for certain goods in Class 18 and all goods in Class 25 on the basis that there was a likelihood of confusion between the marks at issue. The Italian company filed an action before the General Court seeking the annulment of the EUIPO’s decision.
The General Court observed that the average consumer perceives a trademark in its entirety. It highlighted the fact that the mark applied for was a composite mark composed of both word and figurative elements. The Court went on to affirm that the highly stylised nature, colour, position and size of the figurative element would likely divert the public’s attention away from the word element of the trademark. In fact, the figurative element of the mark applied for was as distinctive as the word elements of the mark, the Court asserted. Hence, according to the Court, the EUIPO was wrong to attach greater importance to the word element ‘Chiara’ than to the figurative element.
The differences between the two marks ensured there was no likelihood of confusion between the two brands
The Court then went on to assess the visual, phonetic and conceptual similarity of the marks at issue. With respect to visual similarity, it noted that although the earlier word mark ‘Chiara’ was entirely reproduced in the word elements of the mark applied for, ‘Chiara Ferragni’, the figurative element of the latter had a significant impact in the overall visual impression. Hence, the two marks were only slightly visually similar.
With respect to phonetic comparison, the Court noted that the distinguishing feature, ‘Ferragni’, due to its length, was phonetically more important than the similar element, ‘Chiara’, even though it was positioned after the latter. It hence concluded that the two marks had an ‘average’ or even ‘slight’ phonetic similarity. The Court found the two marks to be also conceptually different since, whilst the mark applied for identified a specific person, the earlier word mark merely referred to a first name, without identifying a specific person.
The Court went on to analyse the likelihood of confusion between the two marks. It noted that though the goods relating to the marks were identical or similar, the differences between the two marks, particularly the visual differences, ensured that there was no likelihood of confusion by the public between the two brands. Hence, the General Court annulled the EUIPO’s decision refusing registration of the figurative mark ‘Chiara Ferragni’ as an EU trademark.
The registration of a trademark endows its owner with numerous advantages, one of which is the possibility of impeding the registration of marks which conflict with the earlier registered mark. Nonetheless, as evidenced by this ruling, such a decision will not be taken arbitrarily by the authorities which need to factor in various considerations relating to the marks prior to refusing registration.
Mariosa Vella Cardona, M’Jur, LL.D., is a freelance legal consultant specialising in European law, competition law, consumer law and intellectual property law. mariosa@vellacardona.com.