General Court: no link between identical GRAZIA marks

In Arnoldo Mondadori Editore SpA v Office for Harmonisation in the Internal Market (OHIM) (Case T-490/12, September 26 2014), the General Court has dismissed Arnoldo Mondadori Editore SpA’s appeal in opposition proceedings against the registration of the mark GRAZIA in Classes 35 and 36 of the Nice Classification.

In 2008 Grazia Equity GmbH filed an application for the registration of the word mark GRAZIA as a Community trademark with OHIM. Registration was sought for financial and business services in Classes 35 and 36.

Italian company Mondadori, which operates in the fashion sector, filed an opposition against the application based on several earlier marks, including the Italian figurative mark GRAZIA, registered in Classes 3, 9, 16, 18, 25 and 38.

The Opposition Division of OHIM rejected the opposition, stating that no likelihood of confusion existed as the goods and services were dissimilar. The opponent had also failed to establish that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character of the earlier mark.

The Fourth Board of Appeal of OHIM also dismissed Mondadori’s appeal. The Board of Appeal held that, as the goods and services were different, there was no likelihood of confusion, regardless of how similar the signs might be and of the reputation of the earlier figurative trademark. Moreover, as the opponent had not proven that the earlier figurative mark enjoyed a reputation, there was no link between the relevant goods and services (Article 8(5) of the Community Trademark Regulation (207/2009)).

Mondadori filed an appeal to the General Court, claiming that the Fourth Board of Appeal had made several errors in finding that there was no likelihood of confusion or link between the marks.

Mondadori argued that the earlier mark had a reputation in Italy for fashion magazines and that Article 8(5) of the regulation should apply. Many of the goods and services covered by the earlier mark would also “substantially interfere” with the services covered by the mark applied for. Mondadori further argued that financial and business consultancy services overlapped with the fashion sector as, for example, financial and business consultancy services are often offered with the aid of computers and software, that those services involve the publication of information and official statements, and that both companies “have clients in common in the fashion sector”. The opponent also maintained that the Board of Appeal should have taken account of the fact that it had used the earlier mark for financial services, by offering the ‘Grazia Insider’ card.

The General Court ruled that, even though the signs at issue were identical and the sections of the public to which the goods and services were directed overlapped in part, the goods and services covered by the signs were completely different and there was no likelihood of confusion. The use related to the ‘Grazia Insider’ card was not relevant, as the opponent’s trademark registrations did not cover financial services.

The General Court further explained the legal criteria and evidence related to reputation, and ruled that “the Board of Appeal was incorrect to conclude that no proof had been furnished that the earlier figurative mark enjoys a reputation”.

The court then examined whether there was a link (connection) between the marks despite the lack of likelihood of confusion. According to the court, the infringements referred to in Article 8(5), where they occur, are the consequence of a certain degree of similarity between the earlier and subsequent marks, as a result of which the relevant section of the public makes a connection between the two marks, that is to say, establishes a link between them even though it does not confuse them.

The court reviewed the factors for finding the existence of such a link and, having analysed the case, concluded as follows:

• The signs were identical.
• There was no likelihood of confusion between the marks.
• The opponent’s mark had a weak inherent distinctive character and did not have a strong reputation.
• The sections of the public at which the goods and services covered by the marks were directed overlapped in part. Services such as "financing services" may also be directed at the general public.
• The goods and services covered by the marks were different. The fashion magazines covered by the earlier figurative mark evoked an image of "exclusivity, beauty and fashion", while business consultancy and financial services did not evoke such an image.

The court ruled that, even though the marks were identical and the sections of the public to which the goods and services covered by those signs are directed overlapped in part, there was no link between the marks, as the images that they evoked were very different and the earlier mark was not very strong. Therefore, no further findings related to Article 8(5) could be made. Consequently, the court dismissed the appeal.

Jukka Palm, Berggren Oy Ab, Finland