Clothing mark might be perceived as belonging to opponent's family of marks
APB Apranga, a leader in clothing retail in the Baltic States, has prevailed in an opposition against the mark APRANGA ČEMPIONAMS for services in Class 35 of the Nice Classification (June 11 2012).
On December 21 2011 APB Apranga (Lithuania) filed an opposition (No PNZ-63) against the Lithuanian registration for the word mark APRANGA ČEMPONAMS (‘clothing for champions’ in English) (Registration 63949) in the name of Vilmantas Aušra, a natural person. The registration covered “advertising; business management; business administration; office functions” in Class 35.
The opposition was filed on the following grounds under the Law on Trademarks of the Republic of Lithuania:
- Article 7(1)(2) - a trademark registration shall be declared invalid if the mark is identical, or similar, to an earlier mark and, due to the identity or similarity of the goods and/or services covered by the marks, there is a likelihood of confusion on the part of the public; the likelihood of confusion includes a likelihood of association with the earlier mark.
- Article 7(1)(4) - a trademark registration shall be declared invalid if it is identical, or misleadingly similar, to the business name of a legal person who had acquired rights to that name in the Republic of Lithuania prior to the date of application for registration of the mark or its priority date, if, on that date, the legal person had the right to engage in trade activities that are identical, or similar, to the goods and/or services covered by the registered mark.
The opposition was based on the following earlier national registrations:
- the figurative mark APRANGA (meaning ‘clothing’ in English) (Registration 58948):
- the figurative mark APRANGA KAIP RENGSITĖS ŠIANDIEN? (meaning ‘clothing what are you wearing today?’ in English) (Registration 57837):
- the figurative mark APRANGA GROUP (meaning ‘clothing group’ in English) (Registration 58949):
- the figurative mark APRANGA IŠPARDUOTUVĖ’ (meaning ‘clothing outlet’ in English) (Registration 62027):
All four marks covered “clothing, footwear, headgear” in Class 25 and “advertising; business management; business administration; office functions” in Class 35. The opponent also alleged that the mark was confusingly similar to the business name Apranga.
The Appeal Division of the Lithuanian State Patent Bureau upheld the opposition and declared that the trademark APRANGA ČEMPIONAMS was invalid on the grounds that:
- the mark was confusingly similar to the opponent’s earlier marks, and the services covered by the marks were similar; and
- the mark was confusingly similar to the opponent’s business name.
First, the Appeal Division found that the overall impression given by the marks was similar because they shared the dominant element ‘apranga’, which is placed at the beginning of the marks. The other word elements - ‘group’, ‘kaip rengsites šiandien?’ and ‘išparduotuvė’ - were written in smaller letters. Moreover, the word ‘group’ was disclaimed, while the word ‘‘išparduotuvė’ describes a place where goods are sold. Therefore, these elements were weak. The same reasoning applied to the word ‘čempionams’ (‘for champions’), which is used in the dative case - thus indicating that the element ‘apranga’ is dominant.
Second, the Appeal Division found that the opponent had demonstrated that its marks are part of a family of marks, since they all share a common element which has acquired distinctive character through use; this common element indicates the common origin of the goods. Moreover, the Appeal Division noted that this common element is not weak and that it dominates the overall impression of the marks. The Appeal Division also pointed out that this common element is in the same position in all the marks making up the family of marks.
Third, the Appeal Division held that the mark APRANGA ČEMPIONAMS was similar to the opponent’s marks visually, phonetically and conceptually, since the dominant element of the opponent’s APRANGA marks was included in the opposed trademark. Importantly, this element is placed at the beginning of the compared marks and, therefore, will be seen immediately by the relevant public (see TURKISH POWER (Case T-34/04), Paragraph 56).
Fourth, the Appeal Division reiterated that the type, purpose and channels of trade of the goods/services must be taken into account when analysing the similarity of the goods/services. Taking these factors into consideration, the Appeal Division noted that the services covered by the compared marks in Class 35 were identical. It also noted that the risk of confusion was greater due to:
- the high degree of similarity of the marks and the identity of the services; and
- the fact that the opposed mark includes the dominant element ‘apranga’ and, therefore, might be perceived as belonging to the opponent’s family of marks.
Moreover, the evidence submitted to the Appeal Division confirmed that the opponent’s marks had acquired a higher distinctive character through intensive and longstanding use in the relevant market sector.
Finally, the Appeal Division stated that, when assessing whether the opposed mark was similar to the business name Apranga, the same criteria as those used to determine the similarity of the marks should apply. The Appeal Division noted that the business name Apranga was first used in Lithuania before the filing date of the application for the mark APRANGA ČEMPIONAMS. Therefore, it had priority over the opposed mark.
Further, the Appeal Division found that, because the business name Apranga is fully incorporated in the opposed mark, there was an inference that the mark and the business name were similar. Since the opponent engaged in business activities which are similar to the services covered by the opposed mark, the Appeal Division held that the compared services:
- were homogeneous and complementary;
- could be offered by the same service providers; and
- targeted the same users.
The Appeal Division concluded that the opposed trademark was misleadingly similar to the opponent’s earlier trademarks; therefore, there was a likelihood of confusion on the part of the public. The Appeal Division also recognised that the opposed trademark was confusingly similar to the opponent’s business name.
Vilma Dauskurdienė, AAA Baltic Service Company - Law Firm, Vilnius
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