Complementary nature of accessories and clothing scrutinized

European Union
In 2nine Ltd v Office for Harmonization in the Internal Market (OHIM) (Cases T-363/08 and T-364/08, March 24 2010), the General Court has upheld a decision of the Board of Appeal of OHIM in a case involving the trademarks NOLLIE and NOLI.

2nine Ltd, a UK-based company, opposed an application filed by US company Pacific Sunwear of California Inc for the registration of NOLLIE as a Community trademark for goods in Classes 3, 9, 11, 14, 18, 20, 25 and 26 of the Nice Classification (perfumes, sunglasses, electric light bulbs, jewellery, purses, handbags, pillows, men’s, women’s and children’s clothing, and hair accessories). The opposition was based on the registered trademark NOLI for goods in Classes 3, 18, 24 and 25. The opposition did not concern the goods in Class 11 (electric light bulbs).

The Opposition Division of OHIM upheld the opposition and rejected the application in respect of all the goods concerned. Pacific appealed. The Board of Appeal of OHIM partially upheld the appeal, finding that the goods in Classes 9 and 14, as well as ‘barrettes, hair pins, hair clips, hair scrunchies’ in Class 26, were dissimilar to the goods covered by the earlier mark. 2nine appealed to the General Court. 
The main issue before the court was the extent to which the principle of interdependence - that is, the principle that “a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks” - should be taken into account in assessing the likelihood of confusion between the marks. As the marks at issue were clearly similar, the issue was thus:
  • whether the goods sold under the marks could be considered to be similar, despite the fact that they belonged to different classes; and
  • if so, whether they were sufficiently similar to be likely to confuse consumers.
The court pointed out that even goods that do not belong to the same class may be considered to be similar. When assessing the similarity of the goods, “all the relevant factors relating to those goods should be taken into account, including, inter alia, their nature, their intended purpose and their method of use, and whether they are in competition with each other or are complementary”.
As regards the complementary nature of the goods at issue, the court stated that, according to case law (see Sergio Rossi SpA v OHIM (Case T-169/03) and El Corte Inglés v OHIM (Case T-443/05)):

"complementary goods are those which are closely connected, in the sense that one is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for the production of both goods."
Further referring to Rossi, the court declared that:

the search for a certain aesthetic harmony in clothing is a common feature in the entire fashion and clothing sector, and is too general a factor to justify, by itself, a finding that all the goods concerned are complementary and, thus, similar.

In that regard, the court had held in a previous case that "eyewear, jewellery and watches are not similar or complementary to items of clothing, since the relationship between those goods is too indirect to be regarded as conclusive” (Oakley v OHIM (Case T-116/06)).
In the case at hand, the court agreed with the Board of Appeal of OHIM that the goods at issue were so dissimilar that the similarity between the marks was, on its own, insufficient to cause confusion among consumers. In particular, the court stated as follows:

As regards the comparison of ‘sunglasses’ and ‘bracelets, rings, necklaces, watches, belly chains, chokers and earrings’ in Classes 9 and 14, on the one hand, and ‘clothing, footwear and headgear’ in Class 25, on the other hand, the [Board of Appeal] found that those goods could be not categorized as similar on the basis of mere aesthetic considerations. As regards ‘barrettes, hair pins, hair clips and hair scrunchies’, the Board of Appeal found that they could not be considered to be clothing accessoriesThey were manufactured by different industries and sold via different distribution channels and outlets. They thus belonged to different markets and could not compete with one another; nor were they interchangeable, substitutable or complementary, since one was not indispensable or important for the use of the others.
The court also rejected 2nine’s claim that it was a well-known practice by fashion designers and retail shops to sell handbags and hair accessories together with clothing and footwear, and that these goods should thus be considered to be complementary. These allegations were not raised by 2nine before the board and, therefore, could not be used to question the legality of the board's decision.
The decision is in line with previous case law of the court - it confirms that the mere search for aesthetic harmony between clothing and accessories cannot justify the claim that they are complementary in such a way as to establish the similarity required by Article 8(1)(b) of the Community Trademark Regulation (40/94).  
Sophie Lens and Uschi De Neve, ALTIUS, Brussels

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