LOST GIRLS held to be confusingly similar to LOST

European Union
In Textilvertrieb Steger GmbH v Lost International LLC (Case R 134/2005-2, December 19 2008), the Second Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has held that the trademark LOST GIRLS was confusingly similar to the earlier trademark LOST.
German company Textilvertrieb Steger GmbH filed an application for the registration of LOST GIRLS as a Community trademark (CTM) for goods in Class 25 of the Nice Classification (clothing). Lost International lodged an opposition based on its earlier CTM LOST for identical goods in Class 25. The Opposition Division of OHIM held that the marks were similar on the grounds that:
  • they shared the word 'lost'; and
  • because the word 'lost' was placed at the beginning of the contested mark, it was likely to catch consumers' attention.
The Second Board of Appeal upheld the decision, but on slightly different grounds. The board considered that the two marks conveyed different concepts for English-speaking consumers in the European Union. The board held that the addition of the word 'girls' would significantly modify the impression given by the trademark applied for. However, the board concluded that non-English-speaking consumers would not understand the expression 'lost girls', but would recognize the word 'girls', which is frequently used in the fashion field to describe the targeted public of clothing products.
Interestingly, the board pointed out that certain "relevant factors" must be taken into account in assessing the likelihood of confusion between two marks for clothing (see the decision of the European Court of Justice in Lloyd Schuhfabrik Meyer (Case C-342/97)). In particular, the board observed that:
“it is common in the clothing sector for the same mark to be configured in various different ways according to the type of product which it designates. It is also common for the same clothing manufacturer to use sub-brands, that is to say signs that derive from a principal mark and which share with it a common dominant element in order to distinguish its various lines from one another (eg, women’s, men’s, youths’). In such circumstances, it is conceivable that the targeted public may regard the clothing designated by the conflicting marks as belonging, admittedly, to two distinct ranges of products (eg, for women in one case, for girls in the other), but as coming, none the less, from the same manufacturer.”
The approach of the board is similar to that followed by the Opposition Division in a case involving the marks SARAH CHOLE FOR BAD GIRLS and BAD GIRLS (Case B 1 025 727). In that case, the Opposition Division held that in the clothing industry, the same mark is frequently displayed under various configurations depending on the type of products involved. The Opposition Division added that clothing companies commonly use sub-brands with a common element in order to differentiate their lines of products. 
The fact that OHIM admitted the existence of such a practice in the clothing industry means that new arguments may have to be taken into account where a trademark seems to derive from another mark. However, this approach must be considered cautiously, as such arguments will not systematically be applicable. For the time being, this approach seems to be limited to cases where the marks share an identical or almost identical component.
Franck Soutoul and Jean-Philippe Bresson, Inlex IP Expertise, Paris

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