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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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The Complexity of Assessing Complex Trade Marks

A recent ruling of the Court of Justice (CJEU) (SocietaItalianaCalzatureSpA v ViciniSpA (joined cases C-308/13 and C-309/13) considered the assessment of the likelihood of confusion in respect of complex marks. The Court brought some sensible clarifications on the criteria applicable in determining the dominant element of a complex mark and in assessing when the said dominant element would keep an autonomous distinctive position within the complex mark, which would lead to a likelihood of confusion between two marks.
Vicini had applied for the following Giuseppe device marks at OHIM (CTM applications nos. 6513386 and 4337754):

Both CTM applications covered “Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harnesses and saddlery” and “Clothing, footwear, headgear ” in classes 18 and 25.

ItalianaCalzature opposed these two CTM applications.
 
The first opposition (to CTM 6513386) was based on ItalianaCalzature’s earlier CTM registration for ZANOTTI (word)covering“Clothing, footwear, headgear” in Class 25 and Italian trade mark registration for ZANOTTI (stylised, shown below) covering “Bags; trunks; suitcases and other products made of leather, animal skin or imitation thereof” and “Any type of footwear and clothing for men, women, children, including sportswear” in classes 18 and 25.

The second opposition (to CTM 4337754)was only based on the earlier CTM Registration for ZANOTTI in Class 25.
 
Initially, OHIM partially upheld both oppositions. However, while, in the first opposition, the Opposition Division rejected “leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags” and “Clothing, footwear, headgear” in classes 18 and 25, the second opposition was upheld only in respect of “Clothing, footwear, headgear” in class 25.
 
Vicini appealed the decisions and the Second Board of Appeal took a completely different view since the decisions of the Opposition Division were revoked and both oppositions were subsequently rejected in their entirety.

In its decision, the Board of Appeal considered that there would be no likelihood of confusion between the marks in question on the basis that:

•    despite conceptual similarities due to the common family name ZANOTTI, the marks are visually and phonetically sufficiently dissimilar; 
•    the opposed CTM applications are dominated by the figurative elements representing a handwritten signature; and
•    the common element “ZANOTTI” does not have an autonomous distinctive position in the opposed CTM applications.
ItalianaCalzature, in turn, appealed to the General Court to have the decisions of the Second Board of Appeal annulled. However, the General Court dismissed the appeals on the basis that there was no likelihood of confusion between the marks.

ItalianaCalzature appealed again, this time to the Court of Justice of the European Union (CJEU) and based their appeal on the following grounds, namely that

•    The General Court did not respect the application of the current criteria set by the EU trade mark practice to determine the dominant element in a complex trade mark; and
•    The General Court erred in its assessment of the notion of “autonomous distinctive position” of an element in a complex trade mark.

On the first ground of appeal, the CJEU ruled that the General Court did not err in finding that it is, in particular, the position and the size of a component of a complex trade mark which determines whether that component is the dominant element in the overall impression of the said complex trade mark. Therefore, in the present cases, since the figurative elements of the CTM applications dominated the overall impression of the marks and since the verbal elements, without being negligible, were secondary in the overall impression given by the marks, the General Court had correctly assessed that there was no likelihood of confusion between the marks in question. 

The Court of Justice further pointed out that there were no set rules pursuant to which the verbal element of a complex trade mark would systematically be more distinctive and dominant than the figurative element.

On the second ground of appeal, The Court of Justice ruled that the assessment of the similarity between two marks should not be reduced to solely considering one element of a complex trade mark and comparing it with another mark. The comparison should be made by assessing each mark globally, which might not exclude that the overall impression given by a complex trade mark, under specific circumstances, could be dominated by one or several elements of the said complex trade mark.

That said, the Court of Justice added that an element of a complex trade mark would lose such a distinctive autonomous position if this element would form, with the other elements surrounding the complex trade mark, taken together, a unity which would have a different meaning compared to the meaning of the said elements taken separately. In the present cases, in addition to having correctly considered that the figurative elements dominated the overall impression of the CTM applications, the General Court did not err in finding that the term “Zanotti” was closely associated with the name “Giuseppe” and with the terms “By” and “Design” and that, therefore, the verbal elements “ Giuseppe Zanotti Design” and “By Giuseppe Zanotti” could be perceived as an indication of the stylist who conceived the products for the relevant public. Consequently, the Court of Justice confirmed that the General Court was accurate in considering that the term “Zanotti” was clearly a secondary element within the complex trade marks applied for and dismissed the appeal.

Comment

While this judgment is interesting in that it brought some sensible clarifications on the scope of protection afforded to complex trade marks, it will surely lead to additional headaches for owners of earlier marks, consisting of one verbal element, who might face some serious challenges in enforcing their rights against third party owned later marks which would reproduce the earlier mark but within a set of additional elements surrounding the mark. It remains to be seen whether this judgement will have an impact on the potential increase of the number of applications filed for complex trade marks at OHIM including prominent figurative elements with the aim, perhaps, to avoid potential objections from third party owners of relevant, earlier marks.