General Court considers distinctive character of first names and surnames

European Union

In Giovanni Cosmetics Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-559/13), the General Court has upheld a decision of the Second Board of Appeal of OHIM in opposition proceedings between Giovanni Cosmetics Inc and Vasconcelos & Gonҫalves SA.

On July 8 2010 Vasconcelos filed an application for registration of the following figurative Community trademark with OHIM:

The goods in respect of which registration was sought fell within, among other things, Class 3 of the Nice Classification, corresponding to “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices”.

Giovanni filed a notice of opposition pursuant to Article 41 of the Community Trademark Regulation (207/2009). The opposition was based on the Community word mark GIOVANNI, registered on December 19 2002 and covering goods in Class 3 - namely, “soaps, shampoo and other hair care preparations, cosmetic preparations, perfumery”. The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of the regulation.

On May 23 2012 the Opposition Division rejected the opposition, and Giovanni filed a notice of appeal with OHIM on June 27 2012.

By decision of August 13 2013, the Second Board of Appeal of OHIM dismissed the appeal. The Board of Appeal observed that the word element 'Giovanni Galli' in the mark applied for would be perceived by the relevant public as an Italian name consisting of the first name Giovanni and the surname Galli. As surnames, as a general rule, are more distinctive than first names, and since the name Giovanni is quite common in Italy, whereas the name Galli is quite rare, the Board of Appeal stated that the most distinctive part of the mark applied for was 'Galli'.    

Regarding the visual comparison of the trademarks, the Board of Appeal found that the degree of similarity was rather low. Even though the marks were aurally similar, the conceptual differences counteracted this: while the earlier mark GIOVANNI would not refer to a specific person, the mark GIOVANNI GALLI would. Against this background, it was concluded that there was no likelihood of confusion.

On October 25 2013 Giovanni filed a notice of appeal with the General Court.

In line with the Board of Appeal’s findings, the court stated that the relevant public consisted of average consumers with an average level of attention. As the earlier trademark was a Community trademark, the likelihood of confusion had to be assessed in relation to the public throughout the European Union.

After stating that the goods in question were partly identical and partly similar, the court turned to the comparison of the signs. The court stated that is was necessary to examine the distinctive character of the elements of the marks applied for, as the assessment of that distinctive character played a role in the comparison of the signs.

The court concluded that the Board of Appeal had been wrong to find that the name Giovanni would be perceived as a common Italian first name by the relevant public, since it could not be held that average consumers throughout the European Union are in a position to establish a link between the Italian first name Giovanni and its equivalent in other EU languages (see also Case T-337/11 (Giuseppe)).

In respect of whether surnames were more distinctive than first names, the court stated that - in the absence of any specific evidence provided by OHIM relating to the perception of the public throughout the European Union - it was not appropriate to extend the case-law pursuant to which, in certain member states, surnames have, as a general rule, a more distinctive character than first names, so that it applies to the whole of the European Union.

Against this background, the court found that there were no grounds for ascribing greater distinctiveness to the element 'Galli' of the mark applied for than to the element 'Giovanni' from the point of view of the relevant public.

When comparing the two trademarks, the court stated that it did not follow from the case-law that the word elements of a trademark must always be held to be more distinctive than the figurative elements. In the present case, the figurative element of the mark applied for was distinctive, since a duck has no connection to cosmetic preparations or cleaning preparations. Further, the drawing of the duck was quite elaborate.

As to the visual similarity, the court concluded that there was only a low degree of visual similarity between the marks at issue since, among other things, the duck in the mark applied for was quite distinctive. In addition, the aural similarity was only average, despite the fact that the first three syllables of the mark applied for were identical to the three syllables of the earlier trademark. Moreover, the conceptual similarity was low as the earlier word mark could not refer to a specific person, which the mark applied for could, as it contained both a first and surname. In addition, the mark applied for contained a drawing of a duck, whereas the earlier trademark did not even contain any reference to the concept of a duck.

Further, the court stated that the Board of Appeal had been right to find that the results of the internet searches using the search engine Google provided by Giovanni did not establish – even if Giovanni’s website was among the first results – that the earlier mark had enhanced distinctiveness through use. Based on the significant differences between the marks at issue, particular the visual differences, the court concluded that it was impossible for consumers to believe that the goods in questions came from the same undertaking or from economically linked undertakings when they are sold under the marks at issue.

The court concluded that, even though the Board of Appeal had made several errors in its decision, those errors could not entail the annulment of the decision since they had no effect on its outcome. Giovanni’s action was dismissed in its entirety.

Nina Ringen, Rønne & Lundgren, Copenhagen

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