ECJ: verbal element of complex mark will not necessarily be dominant

European Union

In Società Italiana Calzature SpA v Office for Harmonisation in the Internal Market (OHIM) (Joined Cases C-308/13 P and C-309/13 P, September 18 2014), the Seventh Chamber of the Court of Justice of the European Union (ECJ) has dismissed the action brought by Società Italiana Calzature (SIC) against two decisions of the General Court in opposition proceedings between SIC and Vicini SpA.

These two cases concerned Community trademark (CTM) applications filed by Vicini for the figurative trademarks GIUSEPPE GIUSEPPE ZANOTTI DESIGN and GIUSEPPE BY GIUSEPPE ZANOTTI in Classes 18 and 25 of the Nice Classification:


These applications were opposed by SIC on the basis of its earlier CTM registrations for the word mark ZANOTTI in Class 25 and the figurative mark ZANOTTI in Classes 18 and 25:

The oppositions were based on the grounds of lack of novelty and likelihood of confusion.

The Opposition Division of OHIM upheld the oppositions for some of the goods in Class 18 and 25, and dismissed it for the other goods.

Vicini appealed against these decisions. The Board of Appeal upheld the appeals and dismissed the oppositions in their entirety.

SIC appealed to the General Court.

The General Court dismissed the appeals, considering that, since the overall impression of the marks applied for was dominated by the figurative elements representing a handwritten signature, there was no risk of confusion.

SIC appealed the General Court's decisions, claiming that they were vitiated by inadequate and contradictory reasoning.

According to SIC, the fact that, in the contested applications, the graphic element was visually dominant when compared with the remaining word elements, and that the words ‘Giuseppe’ and ‘design’ had been added to the term ‘Zanotti', was not sufficient to exclude a likelihood of confusion between the signs at issue. SIC further argued that the element 'Zanotti' could not be considered as having an independent distinctive role.

In its decision, the ECJ confirmed that, even if the comparison of two marks cannot be limited to single elements included in the signs, the overall impression created by the signs can be clearly influenced by a single and dominant element; in particular, when the remaining elements in the signs are devoid of any particular distinctiveness and relevance (and do not retain an independent distinctive role), the comparison of the signs can focus on their dominant elements.

The ECJ further held that, in the present case, the average consumer would perceive the figurative elements of the marks at issue as visually dominant (especially due to their size and position with regard to the remaining elements).

In the two contested applications, the figurative element representing a handwritten signature dominated the overall visual impression created by the marks, while ‘Zanotti’ was placed in the middle of the verbal element and was closely associated with the words ‘Giuseppe’, ‘design’ and ‘by Giuseppe’. Moreover, the elements 'Giuseppe Zanotti Design' and 'By Giuseppe Zanotti' would be easily perceived by consumers as a simple indication of the designer of the goods.

Further, the fact that 'Zanotti' may be perceived as a surname did not automatically imply that this element should be considered as dominant by the average consumer. There are no provisions stating - as argued by SIC - that a word element will be perceived as dominant in a complex trademark.

Given the above, the ECJ confirmed that the applications were not similar to the earlier trademark and confirmed that there was no risk of confusion between the parties' marks.

The actions were thus dismissed.

Marcella Florio and Donatella Prandin, Bugnion SpA, Milan

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