PIAZZA opposition leaves Sara Lee with bad taste in the mouth

In Sara Lee/DE NV v Office for Harmonization in the Internal Market (OHIM) (Case T-265/06, February 12 2009), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had dismissed an opposition against the registration of the figurative mark PIAZZA DEL SOLE.

In February 2001 the intervening party, Cooperativa italiana di ristorazione Soc coop rl, applied for the registration of a mark comprising figurative elements and the words 'piazza del sole'. The application covered goods and services relating to food, beverages and catering in Classes 21, 29, 30 and 42 of the Nice Classification.

Sara Lee/DE NV opposed the registration of the mark for certain goods and services based on its earlier word marks PIAZZA and PIAZZA D’ORO, which are registered in various EU member states.

The parties agreed that the goods and services were identical. The question was thus whether the marks were similar to the point of creating a likelihood of confusion on the part of the relevant consumer as to the commercial origin of the goods ans services.

In December 2004 the Opposition Division dismissed the opposition, finding that there was no likelihood of confusion between Sara Lee’s earlier marks and the mark applied for. Sara Lee appealed. In July 2006 the Second Board of Appeal of OHIM dismissed the appeal based, in particular, on:

Sara Lee appealed to the CFI. Sara Lee’s reasoning was that the Board of Appeal had wrongly analyzed the composition of the relevant marks and had erred in concluding that there was no likelihood of confusion between them. According to Sara Lee, the word 'piazza' - common to all three marks - was the dominant component of the mark applied for and was distinctive, resulting in a likelihood of confusion between the marks.

 

The CFI first referred to its settled case law that the overall assessment of a likelihood of confusion between two marks must be based on the overall impression created by the marks bearing in mind, among other things, their distinctive and dominant components. When a mark is composed of figurative and word elements, it may be similar to another mark if the latter is identical or similar to the dominant component of the composite mark. However, this component must be likely to dominate the image of the composite mark, with the result that all the other components of that mark make a negligible contribution to the overall impression created by it.

The CFI rejected all of Sara Lee’s arguments. First, Sara Lee argued that 'piazza' was distinctive because it did not evoke the relevant goods and services. 'Piazza' means a town or village square in Italian. The CFI noted that the Board of Appeal had concluded that the word 'piazza' did in fact evoke the types of shops and restaurants where the relevant goods and services would be offered for sale and, by extension, those goods and services themselves. Therefore, the word 'piazza' was, to an extent, descriptive of the relevant goods and services. As a commonly used Italian word, it was easily understood by speakers of other languages, especially Latin-based ones. Consequently, 'piazza' was not distinctive in relation to the mark applied for.

The CFI also agreed with the Board of Appeal that consumers would perceive 'piazza' as being identified by the words that followed it. The expression 'del sole' consists of commonly used Italian words that are easily understood by speakers of at least some other languages. The CFI thus upheld the Board of Appeal’s conclusion that 'del sole' was the distinctive component of the mark applied for.

 

Second, Sara Lee submitted that 'piazza' was the dominant component of the mark because:

The CFI did not deny that the relative position of the components in a composite mark should be taken into account in deciding whether any one of them is dominant, but emphasized that this is only one of the factors to be taken into account. In the case at hand, the fact that 'piazza' appeared first in the mark did not mean that the contribution of 'del sole' was negligible with regard to the overall impression created by the mark.
 
Moreover, while the CFI did not deny that the relative size or length of the elements of the mark was relevant, it held that the contribution of 'del sole' was not negligible. The CFI thus concluded that the Board of Appeal had been entitled to find that 'piazza' was neither distinctive nor dominant in relation to the mark applied for. 

The CFI went on to compare the marks and found that the Board of Appeal had rightly decided that there was no likelihood of confusion. The marks had only a limited degree of visual similarity, in particular due to the fact that the mark applied for had figurative elements and distinctive graphic aspects. The mark applied for was also found to differ phonetically from the earlier marks both in its syllabic structure and in its acoustic rhythm. Finally, the CFI agreed with the Board of Appeal that 'piazza del sole' was conceptually different from the earlier marks, as the addition of 'del sole' created a distinct and logical conceptual unit.

The CFI also dismissed Sara Lee’s argument that consumers would perceive the mark applied for as a variation on the earlier marks.

Sara Lee’s action was thus dismissed.