http://ipkitten.blogspot.com/2024/01/a-butterfly-is-not-conceptually-similar.html
Italian fashion company Cris Conf S.p.A. owns a
figurative trade mark depicting two birds on a ring. It opposed an application
for identical goods depicting a butterfly on a ring. By decision dated 11 January
2024 (available only in the original version in Italian) the EUIPO’s Opposition Division
rejected the opposition since the mere association with an animal species is
not sufficient to evoke conceptual similarity.
Facts of the case
On 29 April 2022, the Italian company Passaggio
Obbligato S.p.A. filed an application for the figurative EU trade mark no. 018695865 for classes 18 and 25. The trade
mark consists of a double circular line on the upper portion of which is a
stylized butterfly:
as Pinko, filed an opposition based on two earlier figurative trade mark
registrations (the Italian trade mark no.
2017000128845 and the
International trade mark registration no. 1419699
designating the EU) consisting of a double circular line on the upper portion
of which are posed two stylized birds, with open wings and veins evoking
plumage, arranged symmetrically with their respective beaks joined together.
Both trade marks cover classes 18, 25 and 35.
The decision
The EUIPO, presuming that the contested goods
and services were identical to those of the earlier trade marks, considered that
the relevant public has a medium level of attention and that the relevant
territories are Italy and the EU.
As regards the visual comparison, the EUIPO held
that the signs under comparison only visually coincide in the double circular
line, which lacks distinctiveness it being a simple geometric figure and does
not even convey any semantic content, given that the figures of the bird and
the butterfly different and to be considered normally distinctive as they bear
no relation to the goods and services in question.
As regards the conceptual comparison, the EUIPO
concluded that the signs are dissimilar since they will be associated with
different meanings conveyed by the bird and the butterfly, respectively. In
fact, merely belonging to the animal species is in no way sufficient to evoke a
conceptual similarity.
The opponent argued that the earlier trade marks
possess a high degree of distinctiveness as a result of their longstanding and
intensive use and that the earlier International trade mark has a reputation in
the EU for goods in classes 18 and 25.
The EUIPO considered that all the evidence provided
by the opponent (i) mainly refer to the trade mark Pinko (as the figurative
sign at issue was mostly used as a clasp), (ii) were coming largely from the
same opponent and (iii) did not provide sufficient information on the market
share of the earlier trade mark, the extent of the investments made to promote said
trade mark and the degree of awareness by the relevant public. Therefore, the
earlier trade mark has been proved neither to be distinctive nor to have a
reputation.
Comment
The decision reasonably states that the mere belonging
to an animal species is not sufficient to evoke conceptual similarity. The mere fact that two signs can be grouped
together under a common generic term does not make them automatically
conceptually similar either.
Moving from animals to fruits, it is worth
recalling the decision of the General Court (GC) in T-215/17 related to figurative trade marks
representing a pear and an apple (IPKat here). The GC found that, although an apple and a
pear may have common characteristics, since both are fruits closely related to
each other in biological terms and similar in size, colour, texture, those
common characteristics have very little impact on the overall impression. Consequently,
these elements are insufficient to counterbalance the obvious conceptual
differences between the two signs and make them conceptually similar.
Image from
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