Petit Liberto blocks registration of FIFTIES Community trademark

In Oberhauser v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld the OHIM's decision to refuse the registration of the Community trademark FIFTIES. The court concluded that there was a likelihood of confusion between FIFTIES and the pre-existing Spanish registered trademark MISS FIFTIES.

Claudia Oberhauser, a German resident, filed an application with the OHIM for the Community trademark FIFTIES for jeans. Petit Liberto SA, a Spanish company, opposed the application on the grounds that it had previously registered the trademark MISS FIFTIES in Spain in relation to clothing. Petit Liberto's mark also includes some pictorial elements and the sub-phrase ECCELENTE NELLA TRADIZIONE. It argued that it was likely that the Spanish public would confuse the two marks and believe that the FIFTIES branded jeans were in some way connected with its MISS FIFTIES brand. The OHIM agreed and upheld the opposition. Oberhauser appealed to the Court of First Instance.

The court dismissed the appeal and upheld the OHIM's decision to allow the opposition. It held that although, when judged globally, the two marks did not resemble each other visually (as a result of the additional pictorial elements and sub-phrase included in Petit Liberto's mark), there were phonetic and conceptual similarities. The court reasoned that, given these similarities and the fact that the goods associated with the two trademarks were the same (ie, clothing), the visual differences did not eliminate the risk of confusion. The court also noted that it was possible that Spanish consumers would consider the FIFTIES brand as a sub-trademark of the MISS FIFTIES mark. Fashion houses, said the court, often use sub-trademarks on their goods, usually based on the dominating element of the main trademark.

Paul Reeskamp, Allen & Overy, Amsterdam