Use of LA PERLA in complex mark is confusing, court rules

European Union

The European Court of First Instance (CFI) has upheld the cancellation of a mark that incorporates the words 'LA PERLA' on the grounds that it is confusingly similar to senior registrations held by Italian lingerie maker Gruppo La Perla SpA.

On December 30 1997 Worldgem Brands - Gestão e Investimentos Lda (formerly Cielo Brands - Gestão e Investimentos Lda) filed an application with the Office for Harmonization in the Internal Market (OHIM) to register the word mark NIMEI LA PERLA MODERN CLASSIC for "jewellery ... and watches; precious metals; pearls; precious stones" in Class 14 of the Nice Classification.

After the trademark registration was granted on July 21 1999, La Perla filed an application to cancel the registration for NIMEI LA PERLA MODERN CLASSIC on the basis of:

  • its word mark LA PERLA PARFUMS (effective since October 9 1996) registered in Class 3 ("perfumery");

  • its figurative trademark LA PERLA (effective since October 8 1997) registered in Classes 3, 9, 14, 16, 18, 24, 25 and 35 (covering goods as varied as swimwear, leather products and printed matter, as well as advertising services);

  • another figurative mark (application filed on March 20 1996) for "swimwear, sportive clothing and clothing in general" in Class 25; and

  • two further figurative marks filed on October 11 2000 and June 12 2002 respectively.

La Perla also attached to its application for cancellation a large number of magazine articles and statistics showing the fame of its trademark.

On May 4 2004 the OHIM Cancellation Division annulled the registration of the mark NIMEI LA PERLA MODERN CLASSIC on the grounds that it took unlawful advantage of the reputation of the LA PERLA mark.

Worldgem Brands appealed. The First Board of Appeal upheld the appeal, finding that the public were not likely to be misled by the mark NIMEI LA PERLA MODERN CLASSIC.

La Perla appealed to the CFI, arguing that:

  • its LA PERLA trademark is well known; and

  • the words 'LA PERLA' contained in the junior mark had no descriptive function and consequently were used for the sole purpose of taking unlawful advantage of the fame of the mark LA PERLA.

The CFI annulled the Board of Appeal's decision. The court held that the board had not properly considered the earlier mark's reputation within the Italian market. In addition, the CFI found that the verbal element 'LA PERLA' (which means 'the pearl') constitutes the dominant element in La Perla's trademark, while the dominant element in the junior mark is the word 'NIMEI', which does not have any meaning in Italian. Considering also that the words 'MODERN' and 'CLASSIC' are descriptive and therefore marginal, the court found that they were not sufficient to distinguish the later mark from the earlier one. The court also noted that the marks at issue are used for very similar products belonging to closely related segments of the market (ie, female clothing and jewellery). These products are often put on the market and distributed in the same shops, which increases the risk of confusion. Accordingly, the court held the junior mark to be confusingly similar to La Perla's marks and cancelled the registration.

Margherita Bariè and Pietro Pouchè, Carnelutti Studio Legale Associato, Milan

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