Opposition to GIORGIO registrations rejected

European Union

In two separate decisions, the European Court of First Instance has rejected applications by Spanish company Laboratorios RTB to oppose the registration of GIORGIO BEVERLEY HILLS and GIORGIO AIRE as Community trademarks. It held that the visual, aural and conceptual differences between the marks and RTB's Spanish registrations for J GIORGI, GIORGI LINE and MISS GIORGI were sufficient to eliminate the likelihood of confusion, even though both sets of marks covered identical products.

RTB filed its opposition actions against US perfume and cosmetics company Giorgio Beverley Hills Inc's Community trademark registrations for GIORGIO BEVERLEY HILLS and GIORGIO AIRE. RTB argued that the two marks contained the word 'Giorgio', which was nearly identical to the dominant part of its Spanish marks, namely 'Giorgi'. In its view, the introduction on to the market of Giorgio Beverley Hills's trademarks for similar products to those covered by its GIORGI series of marks would cause confusion in the marketplace.

The Court of First Instance rejected this argument finding that the requirements to establish a likelihood of confusion had not been met.

The court agreed that the goods covered by the earlier Spanish marks were comparable or identical to the goods covered by Giorgio Beverley Hills's marks, but held that the two sets of marks were not similar. It compared the visual, aural and conceptual elements of the conflicting signs. On a visual level, the court held that although the two sets of marks bear some resemblance to each other by way of the similar words 'Giorgio' and 'Giorgi', there were a number of major differences. Giorgio Beverley Hills's trademarks contain additional elements, namely 'Aire' and 'Beverley Hills'. Consequently, the overall impression conveyed by those marks differed to that of the GIORGI series of marks.

In terms of phonetic similarity, the court found that the similarities between the two sets of marks were negligible when compared to the differences.

The court also indicated that there was no conceptual similarity between the two sets of marks because although each of the contested signs contained the word 'Giorgio' as a dominant element, they also contained the words 'Aire' and 'Beverley Hills' respectively. These extra words, said the court, had a semantic importance so that when combined with 'Giorgio' they produced a whole that differed conceptually from the earlier Spanish marks.

Accordingly, the court allowed the registration of the GIORGIO BEVERLEY HILLS and GIORGIO AIRE marks.

Nick Rose, Field Fisher Waterhouse, London

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