MANGO ADORABLY is not similar to J’ADORE and ADIORABLE
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In Parfums Christian Dior v Office for Harmonization in the Internal Market (OHIM) (Case T-308/08, September 15 2009), the Court of First Instance (CFI) has held that the trademark MANGO ADORABLY was not confusingly similar to the earlier marks J’ADORE and ADIORABLE.
Consolidated Artists BV (incorporated in the Netherlands) sought to register MANGO ADORABLY as a Community trademark for goods in Class 3 of the Nice Classification ("soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices"). The mark consisted of the stylized word 'mango' in capital letters and the word 'adorably' in lower case underneath. Parfums Christian Dior opposed the application based on earlier French and international registrations for the trademarks J’ADORE and ADIORABLE for goods in Class 3.
The Opposition Division of OHIM found that the goods were identical, but concluded that the marks were dissimilar. In particular, the Opposition Division considered that the highly distinctive character of the J’ADORE mark in the European Union was irrelevant in light of the finding that there was no similarity between the marks. The Board of Appeal of OHIM affirmed, pointing out the visual, aural and conceptual differences between the marks. Dior appealed.
Before the CFI, Dior argued that the word 'adorably' occupied a distinctive position in the mark MANGO ADORABLY. Therefore, the Board of Appeal should have compared the marks J’ADORE and ADIORABLE with the element 'adorably', rather than focusing on the dominant element 'mango'. However, the CFI considered that the comparison could not be carried out by focusing only on the word 'adorably' - whether that word occupied a distinctive position in the mark applied for was considered to be irrelevant.
From a visual point of view, the CFI found that the overall impression of the MANGO ADORABLY mark was dominated by the element 'mango'. The fact that the marks J’ADORE and ADIORABLE shared letters with the word 'adorably' was insufficient to create a likelihood of confusion. From an aural point of view, the absence of the word 'mango' in the earlier marks resulted in a clear difference in pronunciation between the marks. Finally, the CFI found that the similarities between J’ADORE, ADIORABLE and 'adorably' were insufficient to create a conceptual similarity between the marks.
Arguably, the CFI followed the correct approach with regard to the comparison of the marks. It gave full consideration to the position, size and distinctiveness of the components of the marks. The likelihood of an average consumer being reminded of the earlier marks upon seeing the MANGO ADORABLY mark was too remote.
Dior also sought to rely on Article 8(5) of the Community Trademark Regulation (40/94), arguing that due to the reputation of its J’ADORE mark throughout the European Union, the relevant public was likely to make a link between MANGO ADORABLY and J’ADORE. Therefore, use of the mark MANGO ADORABLY would take unfair advantage of the reputation of the J’ADORE mark. However, the CFI objected that because the marks were not similar, the conditions for application of Article 8(5) had not been fulfilled.
The findings of the CFI in this respect are in line with EU case law: the reputation of the J’ADORE mark could not serve to compensate the lack of similarity between the marks.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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