No family of ELITE marks

In Elite Licensing Company SA v Elite NYC ApS (V-117-08, March 19 2010), the Maritime and Commercial Court has held that there was no likelihood of confusion between trademarks including the word 'elite'.
The Elite Model Management company was established in 1972 in Paris. In 1977 it opened a model agency in New York and today it has offices in 36 countries worldwide. Elite conducts merchandise activities via Elite Licensing Company SA, which owns a number of Community trademark registrations containing the word 'elite'.
House of Scandinavia Care (HOSC) and Elite NYC, established in 2002 and 2006 respectively, operate in the personal care and perfumery sectors. In 2003 HOSC applied for the registration of ELITE as a word mark and device mark, but both were denied registration due to lack of significance. In 2004 it applied for the registration of the device mark ELITE NEW YORK. The mark was registered for goods in Classes 3, 9, 18, 21 and 25 of the Nice Classification.
Elite Licensing sued Elite NYC and HOSC, demanding the deletion of the registered trademark ELITE NEW YORK and payment of Dkr562,500. The court found for Elite NYC and HOSC.
The court held that the word 'elite' originally meant "the best and cleverest of a certain group of persons", but is also used to express something qualitative, that something is "the best". It held that the word 'elite' in itself is not very distinctive.
The word 'elite' was the only common part of Elite Licensing's trademarks, which also contained other words or devices which had not been used consistently. Consequently, Elite Licensing's trademarks could not be given protection as a family of marks.
When considering whether a likelihood of confusion existed, the court remarked that only those marks which Elite Licensing registered before December 16 2004 for goods in Class 3 could form part of the consideration. Those marks, which all contained the word 'model' and, respectively, 'fashion', 'studio' and 'look', differed significantly from the elements in the device mark ELITE NEW YORK, as the dominant element in both marks - 'elite' - had to be disregarded since it lacked significance.
Based on an overall evaluation of the visual, phonetic and conceptual similarities between the marks, the court found that there was not such a likeness between Elite NYC's and Elite Licensing's marks that they were confusingly similar or that a connection between them was presumed. The court thus found for Elite NYC and HOSC and ordered Elite Licensing to pay Dkr60,000 in costs.
Mads Marstrand-Jorgensen, Norsker, Copenhagen

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