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- Written by Soazig Thémoin
- Category: NEWS
- Created: 30 September 2019
From electronic copy of the European Union trademark No. 14346795 (the EUIPO’s database “eSearch plus”)
The EU General Court, in a recent judgment dated February 8th, 2019, decided whether the semi-figurative EU trademark application “CHIARA FERRAGNI” as depicted supra, was infringing the prior verbal Benelux trademark “CHIARA”, registered for identical or similar products in class 25.
This “CHIARA FERRAGNI” trademark application has been filed by a company related to the Italian influencer of the same name for goods in classes 18 and 25 (bags, suitcases, umbrellas, clothing, hats, footwear, etc.).
The EUIPO’s Opposition Division firstly recognized the existence of a likelihood of confusion between these two trademarks, which has been confirmed by the Fourth Board of Appeal.
This case being then brought before the General Court, the latter proceeded to a deep analysis of the comparison between the signs, which led to the following main assessments.
- In contrast with the usual approach, judges considered that the figurative element of the contested trademark “CHIARA FERRAGNI” is able to divert consumers’ attention from the verbal element, considering its position, size, colour and high stylisation. It results that this figurative element in the shape of an eye has “a significant impact” on the overall visual impression.
- More importantly, it has been considered that both signs at stake are conceptually different, including for consumers perceiving the common term “CHIARA” as a first name within them. Judges specified in this respect that “a conceptual similarity cannot be deduced from the mere observation that both trademarks include the same first name. Indeed, the contested mark identifies and individualises a specific person, namely a member of the Ferragni family, while the earlier mark only refers to a first name, without identifying any specific individual”.
It follows that the General Court dismissed the existence of any likelihood of confusion and revoked the Fourth Board of Appeal’s decision.
Although this final assessment is not as surprising considering differences existing between the signs, finding a lack of conceptual similarity between them goes against habitual EUIPO’s practice in this matter, which at least assigns a minimal conceptual similarity when both signs share an identical element.
Risk of such a new reasoning is finally that first names would not be considered as endowed of any meaning. Maybe it would have been safer, especially for further similar cases, to only point out that family names are usually more distinctive than first names in order to demonstrate low influence of the latter in the present comparison of the signs.
Yet, judges evoked this aspect, without actually highlighting it as a decisive one. They indeed specified that the relevant public, i.e. Benelux consumers, shall memorise the term “Ferragni” as a more distinctive element than the first name “Chiara”. According to them, the former is an uncommon family name on the Benelux territory much rarer than the latter, which shall be perceived as a classic Italian first name known from its local linguistic versions, such as “Claire” or “Klara” (French and German, respectively).
Once again, assessment of first names through trademark law remains uncertain, whether it relates to its potential conceptual meaning or distinctive character.
Strong vigilance is therefore recommended when filing and enforcing trademarks containing such elements.
Do not hesitate to consult us, we are available to assist you in the choice of your trademark.
You may find the judgment here:
Reference: General Court, case No. T-647/17, February 8th, 2019
Juriste spécialisé en PI