Trademarks and the Sum of Their Parts Face EU Scrutiny

(CN) – Backing a proposed trademark that includes the same word as an existing mark, the European General Court ruled Friday that its other components must be taken into consideration.

A copy of the decision out of Luxembourg is not available in English, but a press release explains that the case stems from a notice of opposition filed by a Dutch company when Italian entrepreneurs tried to register with the European Intellectual Property Office.

Somewhat similar to the mark “Chiara” that had been registered in Benelux in 2015, the Italians here wanted to register the mark “Chiara Ferragni” as for bags, leather purses and key cases, among other things.

EUIPO officials refused to register the new mark to foreclose the possibility of confusion, but the European General Court annulled that decision Friday. 

“The court notes, first of all, that the average consumer perceives a mark as a whole and the mark applied for is a composite mark composed of both word and figurative elements,” the press release states. 

The Chiara Ferragni mark specifically has the two words in black capital letters, positioned below a drawing of an eye with a blue iris and long black lashes. 

“Those long lashes look like the letter ‘i’ in the words ‘chiara’ and ‘ferragni,’” which appear in bold, the ruling emphasizes.

Citing the eye’s highly stylized nature, color, position and size, the court determined that such elements are “likely to divert the relevant public’s attention away from the word element.”

“In essence, the figurative element of the mark applied for is at least as distinctive as the word elements of the mark taken as a whole,” the press release states. “EUIPO was therefore wrong to attach greater importance to the word element ‘chiara’ than to the figurative element.”

Though both marks have a slight visual similarity because of the word “chiara,” the court emphasized that the addition of the longer word “ferragni” makes it distinguishable.

“Therefore, the two signs at issue have an ‘average’ or even ‘slight’ phonetic similarity,” the press release states.

Conceptually, the marks diverge as well, according to the ruling, “since the mark applied for identifies a specific person, while the earlier word mark merely refers to a first name, without identifying a specific person.”

Both marks are registered for similar classes of goods, but the court said the visual differences in particular between the two marks “provide sufficient grounds to rule out any likelihood of confusion on the part of the public.”

“As the goods in question are generally sold in self-service stores where decisions to purchase are mainly based on visual criteria, the differences between the two marks mean that consumers will not think that the goods come from the same undertaking or from economically-linked undertakings when they bear the marks at issue,” the press release concludes. “The court therefore concludes that EUIPO erred in finding that there was a likelihood of confusion.”

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