L'ALTRA MODA not confusingly similar to ALBA MODA, says CFI

European Union
In Otto GmbH & Co KG v L'Altra Moda SpA (Case T-224/06, June 25 2008), the Court of First Instance (CFI) has dismissed an appeal against a decision of the Board of Appeal of OHIM in which the latter had dismissed an opposition against the registration of the trademark L'ALTRA MODA. The case illustrates the importance of identifying the relevant public in evaluating the risk of confusion.
L'Altra Moda SpA (Italy) applied for the registration of the figurative mark L'ALTRA MODA as a Community trademark for goods in Classes 3, 18 and 25 of the Nice Classification(including clothing). Otto GmbH & Co KG (Germany) opposed the application based on the earlier German registration for the figurative mark ALBA MODA for goods in Class 25 (including clothing). 
The Opposition Division of OHIM rejected the opposition on the grounds that there was no likelihood of confusion between the marks. The Board of Appeal affirmed the decision and Otto appealed to the CFI.
First, the CFI held that:
  • the relevant public was the average German consumer; and
  • in relation to clothing, the word 'moda' is understood by German consumers as meaning 'fashion' .
Therefore, the CFI found that the word 'moda' has a very weak distinctive character and must be considered as negligible when assessing the overall impression of the marks.
Based on the foregoing, the CFI held that:
  • from a visual point of view, the trademarks L'ALTRA MODA and ALBA MODA are dissimilar based on the following grounds:  

    • the length of the terms 'l'altra' and 'alba' differs;
    • as the letter 'L' followed by an apostrophe is not used in the German language, this sequence cannot be separated from the term 'altra'; and
    • the middle letters ('TR' and 'B' respectively) are very different; 
  • from a phonetic point of view, the terms 'alba' and 'l'altra' are different, as the first and middle letters differ; and
  • from a conceptual point of view, 'moda' is negligible, while 'alba' or 'altra'  refer to no particular concept.
Therefore, the CFI concluded that there was no likelihood of confusion between the marks.
This decision is likely to attract criticism. The court disregarded the word 'moda' and compared only the terms 'l'altra' and 'alba', thus not assessing the trademarks as a whole. In addition, the court did not take into account the fact that the trademarks are:
  • visually similar, as one word appears on top of the other in both designs; and 
  • conceptually similar, as both marks use Italian words and thus evoke Italian fashion. 
Arguably, the combination of these elements is likely to cause confusion among the public - at least in Mediterranean countries, where the sequence consisting of the letter 'L' followed by an apostrophe is frequently used and might be disregarded in comparing the trademarks. Unfortunately for Otto, the CFI did not take Mediterranean countries into account.
Jean-Frédéric Gaultier, Clifford Chance LLP, Paris

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