General Court upholds Armani’s appeal: A case of visual similarity?

In a recent decision, the General Court upheld Giorgio Armani’s appeal in a case revolving around the visual similarity between Armani’s well-known logo and a sign that also consisted of eight horizontal stripes. Despite the simplicity of the elements involved, the Court found a low degree of visual similarity to exist. The ruling underscores the complexities and nuances involved in enforcing rather abstract figurative trade marks, even for globally recognized brands.

Background

On 29 December 2020, Shenzhen City Chongzheng Technology Co. Ltd filed an application for registration of EU trade mark no. 018365053 for the following figurative sign:

It covered various electronics in class 9, such as ‘headphones; USB chargers; electrical cables; rechargeable batteries’.

Giorgio Armani SpA (‘Armani’) filed an opposition against this application on the basis of its EU trade mark no. 015743891 protecting the following sign:

It was registered in 2017 for a broad range of goods in classes 9 and 25. Armani invoked a likelihood of confusion (Art. 8(1)(b) EUTMR) with its trade mark’s goods in class 9 and asserted an infringement of its trade mark with a reputation for the goods in class 25 of its earlier mark (Art. 8(5) EUTMR).

The Opposition Division of the European Union Intellectual Property Office (‘EUIPO’) dismissed the opposition. The EUIPO’s Board of Appeal (‘BoA’) dismissed Armani’s appeal. Both bodies found the signs to be dissimilar.

Armani appealed to the General Court.

The General Court’s Decision

The General Court upheld the appeal and annulled the BoA’s decision (T-509/23).

Without determining the relevant public or its level of attention, the judges assessed the similarity of the signs. They found that both marks were composed of the same number of black horizontal stripes on a white background and presented a V shape. While the Court acknowledged that these characteristics were represented somewhat differently in the marks, the differences were deemed minimal. They did not justify the finding of a different overall visual impression.

The eagle head in Armani’s trade mark and the horizontal line at the bottom of the contested mark were secondary elements, which would not prevent the public from perceiving and remembering the signs as V shapes comprised of black horizontal lines on a white background. The fact that consumers retained an imperfect image of the signs reinforced the finding of a low degree of visual similarity between the signs.

In the contested decision, the BoA referred to General Court judgments in which the following signs have been found to be dissimilar:

Earlier mark(s)	Contested mark	Case no.
		T-581/17
		T-491/22, IPKat here

Without much ado (and reasoning), the judges considered these cases not to be comparable.

On that basis, the Court deemed the BoA’s denial of a low degree of visual similarity to be sufficient to annul the contested decision.

The fact that the signs could not be compared phonetically and that they were conceptually different was irrelevant. At least partial similarity between the signs in terms of one or more of the visual, phonetic or conceptual aspects was sufficient in order for the BoA to be required to conduct a global assessment of the likelihood of confusion (Art. 8(1)(b) EUTMR) and to assess the further requirements of claims based on a trade mark with a reputation (Art. 8(5) EUTMR).

Comment

The assessment of the similarity of signs must be conducted without taking an increased degree of distinctiveness or the reputation of the earlier mark into account (e.g. T-792/17 at para. 66). This is a difficult exercise. Pretending not to know a sign even though you are familiar with it seems quite challenging.

Pretending that the Armani logo was not famous, the similarities between the signs appear to be too few to accept that they are similar for the purposes of a likelihood of confusion under Art. 8(1)(b) EUTMR. However, the threshold for similarity is lower for finding that the rights to a trade mark with a reputation have been infringed. It is sufficient that the public establishes a link between the signs. This does not require the signs to be so similar as to cause confusion. Even faint similarity is sufficient (C-581/13 P and C-582/13 P at paras. 72 et seq), which arguably exists between the trade marks in question.

When reviewing previous case law on famous trade marks, the General Court has not always been as generous as in the case discussed above. For instance, it found the following signs not to be sufficiently similar for consumers to create a link and, therefore, dismissed claims on the basis of trade marks with a reputation (Art. 8(5) EUTMR):

Earlier mark	Contested mark	Case no.
		T-44/20, IPKat here
		T-623/16
		T-544/23

When comparing these judgments and the ones cited by the BoA in its decision, it sometimes seems to be a coin toss whether or not an opposition will be successful.