http://ipkitten.blogspot.com/2023/12/a-lions-head-is-weak-trade-mark-says.html
On 20 December 2023, the
General Court (GC) issued its decision in the case T-564/2 regarding the registration of an EU
figurative trade mark representing a lion’s head encircled by rings forming a
chain in classes 14 and 25.
Background
On 23 November 2017,
Pierre Balmain (the applicant) filed an application for registration in classes
14 and 25 of the following figurative EU trade mark:
Polish company Story
Time sp. Z o.o. filed an opposition based on its earlier Polish figurative
trade mark registered in classes 14 and 25:
On 18 November 2021,
the Opposition Division upheld the opposition. The decision was appealed. The
Board of Appeal (BoA) dismissed the appeal (R 96-2022) on the ground of likelihood of
confusion within the meaning of Article 8 (1)(b) of Regulation no.
2017/1001. In particular, the BoA took the view that, in the context of the global
assessment of the likelihood of confusion, the relevant public’s level of attention
varied from average to high, that the goods at issue were identical or similar
from low to high, that the trade marks at issue were visually similar to an
average degree and conceptually identical and that the earlier trade mark had a
normal degree of inherent distinctiveness.
The applicant appealed
the decision to the GC.
Image via Pexels
The General Court’s decision
Regarding the subject
matter of the proceeding, the GC recalled that the judgment of 5 February 2020,
regarding the same trade mark “representation of a lion’s head encircled by
rings forming a chain (T‑331/19, see
The IPKat here), was not appealed and therefore had become
final for “decorative cuff link covers”, “lapel badges of precious metal” and “precious
metals and their alloys (not for dental purposes)” in Class 14.
The GC therefore
examined the evaluation by the BoA on the likelihood of confusion.
The GC firstly confirmed
that the relevant territory is Poland (this point was no longer contentious).
Regarding the relevant
public, the GC recalled that it consists of consumers who are likely to use
both the goods protected by the earlier mark and those covered by the trade
mark application (T‑270/09).
Moreover, in the context of the global assessment of the likelihood of
confusion, it is necessary to consider the group of goods protected by the
trade marks at issue and not the goods marketed under those marks (T‑49/20). It
follows that products in class 25 (clothing) include goods which vary widely in
quality and price. The same reasoning can be applied to products in class 14
(jewellery). These products are directed at both professionals (jewellers) and consumers.
In this latter case the level of attention is in most cases high.
It is worth noting
that the applicant had contested that the relevant public displays a high level
of attention for some of the goods in class 25 (gowns, petticoats, tailleurs, dinner
suits, pelerines, gabardines, waterproof clothing, furs, stoles, sashes for
wear, lingerie, pumps footwear), because they are not used on an everyday basis
and being expensive.
The GC therefore
confirmed the BoA’s assessment of the relevant territory, the relevant public
and its level of attention, which varies from average to high.
Coming to the comparison
of the trade marks at issue, the GC held that, in the fashion sector, it is a
banal or common practice to use representations of lions or lions’ heads (in
general of wild, strong and exotic animals) and other graphic elements are
inherently banal decorative motifs.
Consequently, the BoA
erred in finding that the earlier mark had an average degree of inherent
distinctiveness, since that degree of inherent distinctiveness must be regarded
as low.
The GC therefore
concluded that, due to the weak distinctive character of the earlier mark, the
fact that the trade marks at issue are visually similar to an average degree
was not sufficient to establish a likelihood of confusion, even if the goods
were identical. The contested decision was annulled on this point.
Comment
The main take-away of
this case concerns the strength – or rather: lack thereof – of marks depicting wild
and exotic animals in the fashion sector.
Moreover, the GC provided useful clarifications on the evaluation of the
likelihood of confusion in the fashion sector, especially with regard to certain
products in the clothing sector which are supposed to differ from others being luxury
goods.
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