Penguin marks are not similar, says OHIM

European Union
In Perry Ellis International Inc v Ambrosi (Case B 1 167 683, May 20 2009), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has held that two purely figurative trademarks consisting of the image of a penguin were not confusingly similar.
Antonio Ambrosi, an Italian national, filed an application for the registration of a figurative trademark (Application 5,052,949) for goods and services in Classes 18, 25 and 35 of the Nice Classification. The mark consisted of the image of a penguin with its head turned to the right. Its left flipper was spread while the right one was resting on its body. The rims were black with parts of white spirals represented inside.
US company Perry Ellis International Inc lodged an opposition against the application based on three earlier figurative Community trademarks for goods in Classes 18 and 25. The marks consisted of the image of a penguin wearing a  shirt, with its head looking slightly to the left and spread wings. Its legs were thick and split into two parts.
The Opposition Division of OHIM found that most of the goods and services covered by the mark applied for were identical or similar to the goods covered by the earlier marks. However, the interest of the decision lies in the comparison of the marks.
The Opposition Division found that the marks were similar from a conceptual point of view. Nevertheless, the mere fact that both marks consisted of the image of a penguin was not sufficient to conclude that the marks were similar from a visual point of view. The Opposition Division pointed out that there were several differences between the marks:
  • the heads and wings had a different position;
  • the eyes and beaks had a different size and different representations;
  • the rims of the drawings were different;
  • the legs were split into a different number of parts and had a different size; and
  • the penguin in the earlier marks wore a shirt, while that in the mark applied for did not. 
Because the marks at issue were purely figurative, no aural comparison was carried out.
In making its global assessment, the Opposition Division pointed out that any aural or conceptual similarity arising from the fact that the marks at issue consisted of the image of a penguin would be coincidental and, in any event, insufficient to counterbalance the predominant visual differences. It added that in clothing and footwear shops, consumers can either choose the product that they wish to buy by themselves or be assisted by the sales staff. Nevertheless, the choice of the clothing item is generally made visually.
This reasoning seems to contradict the decision of the Court of First Instance in Mast-Jägermeister AG v OHIM, in which it was held that figurative marks representing a deer's head were similar from a visual and conceptual point of view. It also contradicts the decision in L & D SA v OHIM, in which the European Court of Justice found that two figurative marks consisting of the silhouette of a fir tree were similar from a visual and conceptual point of view.
In the present case, the outcome may have resulted from the fact that the earlier marks were variants of each other and had slightly different features. Arguably, Perry Ellis should have relied on only one of its marks to increase its chances of success.
The decision also highlights the approach taken by OHIM with regard to trademarks for the clothing sector. It is in line with EU case law under which the visual aspect of trademarks for clothing plays a greater role in the global assessment of the likelihood of confusion. OHIM may have reached a different conclusion if the penguin marks had covered other types of goods and services.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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