Trademarks commissioner not crazy about Armani's MANIA opposition
In an opposition proceeding, the Israel commissioner of patents and trademarks has ruled that Armani GA Modefine SA's registered marks MANIA in Class 3 of the Nice Classification and MANI in Class 25 do not block the registration of MANIA MEN'S WEAR (and design) in Class 25.
The applied-for mark consists of the word 'Mania' in black, where the letter 'A' is extended in the form of an arrow and is partially surrounded by a red circle. The words 'Men's Wear' appear beneath the mark in light grey. The commissioner noted that the form of the letter 'A' as used in the MANIA MEN'S WEAR mark is registered separately as a trademark in Israel in the name of the applicant. In addition, it appears that the applicant also uses the word 'Mania' in other forms, sometimes without the words 'Men's Wear'. Nevertheless, the commissioner noted that he is required to examine the mark only as it appears in the application.
Section 1 of the Israel Trademarks Ordinance 1972 states that in determining whether a mark is well known, consideration will be given, among other things, to the extent to which it is recognized by the relevant sectors of the Israeli public and the degree to which its recognition is due to advertising efforts. The courts have further ruled that the mark has to be known specifically in Israel and it is not enough that it is a well-known mark in other countries.
There is no disagreement that the mark GIORGIO ARMANI is a well-known mark in Israel and that it enjoys great reputation. The mark ARMANI is the house mark of Armani and it is used in conjunction with the marks MANIA and MANI. However, Armani failed to bring sufficient evidence regarding the extent of use of the MANIA and MANI marks to support a finding that they are well known. Rather, the argument was based on the claim that the juxtaposed use of the well-known mark ARMANI with these marks conferred well-known mark status on them as well. This claim was rejected by the commissioner.
After determining that the marks are not well-known, it still remained to be determined whether cosmetics (Class 3) and menswear (Class 25) are goods of the same description, within the meaning of Section 11(9) of the ordinance. In claiming that the answer to this question is positive, Armani relied on a court decision that coined the term 'commercial family', the definition of which varies according to the circumstances such as market structure and the relevant actors, and whereby goods of the same commercial family may be considered to be goods of the same description.
The commissioner examined the proximity between the goods by means of the six main criteria as established by the courts, namely:
- nature of the goods;
- the purpose for which the goods are used;
- the nature of the customers;
- marketing channels;
- the manner in which the goods are offered for sale; and
- the degree of competition between the goods.
The commissioner ruled that applying these criteria leads to the conclusion that the respective goods (ie, cosmetics and clothing) are not of the same description.
Although the commissioner held that the mark MANIA in Class 3 does not block registration of the MANIA MEN'S WEAR mark, there remained the question of likelihood of confusion with the MANI mark in Class 25.
An analysis of likelihood of confusion is based on a three-part test:
- the sight and sound of the two marks;
- the respective goods and types of customers; and
- other relevant circumstances.
In this case, the comparison is between the MANI mark together with the house mark ARMANI, on the one hand, and the applicant's mark, on the other. The law is inconclusive in the United States and elsewhere regarding whether adding a house mark strengthens or weakens the distinctive power of the mark. An additional point to be emphasized is that the examination must consider not only Armani's mark in its entirety but also the applicant's full mark including the words 'Men's Wear'.
The commissioner ruled as follows:
- According to the above factors, no similarity or likelihood of confusion was found. The respective marks convey different overall commercial impressions.
- The house mark only accentuates the differences, because it is more prominent and well-known and therefore it is likely that the public will take specific notice of it.
- The sound of the two marks differs.
- The respective goods and types of customers are similar, but the channels of trade are totally different, and it appears that Armani's mark MANI is not in use in Israel.
- The mark MANI is perceived as a part of the house mark ARMANI. In contrast, the applicant's mark has an independent lexicographic meaning that appeals to the youth market (ie, madness, insanity and craziness).
In light of all of the above, it was determined that there is no confusing similarity between the marks and thus the opposition was rejected.
Neil Wilkof and Shir Uzrad, Herzog Fox & Neeman, Tel Aviv
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