'Vintage' and 'retro' held to be widely understood by non-English-speaking public

European Union

In Beyond Retro Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-170/12), the General Court has annulled, in part, a decision of the Fourth Board of Appeal of OHIM concerning the marks BEYOND VINTAGE and BEYOND RETRO.

In October 2008 S&K Garments Inc registered the international trademark BEYOND VINTAGE, which designated the European Community, and covered jewellery, clothing accessories and clothing in Classes 14, 18 and 25 of the Nice Classification. Beyond Retro Ltd opposed this registration based on its earlier Community trademark BEYOND RETRO which covered, among other things, clothing in Class 25.

The opposition was based on Article 8(1)(b) of the Community Trademark Regulation (207/2009), and was upheld by the Opposition Division in relation to Classes 18 and 25, but rejected regarding Class 14 (ie, jewellery). S&K appealed, as did Beyond Retro in relation to the decision permitting the registration of BEYOND VINTAGE for Class 14 goods. The two appeals were joined, and the Fourth Board of Appeal found in favour of S&K and against Beyond Retro, resulting in the opposition being dismissed in its entirety.

Beyond Retro appealed further to the General Court, whose decision was published on April 30 2014. Beyond Retro again relied on Article 8(1)(b) of the regulation, on the basis that it had received a number of complaints relating to likelihood of confusion and that the Board of Appeal had not assessed the matter correctly.

First, whilst it was agreed that the Class 18 and 25 goods were identical, it was disputed that the goods in Class 14 were identical too. The General Court reviewed the reasoning of both the Board of Appeal and OHIM, and held that OHIM was correct to state that there was no complementary connection between jewellery and clothing. Furthermore, it was discussed that the nature of the goods was different in terms of the raw materials and their intended purpose (ie, to cover versus to adorn). It was also distinguished that the channels of distribution could not be held to be identical as, whilst they may be promoted similarly via magazines and the Internet, it was possible to say that consumers would not associate clothing with a specialist shop selling jewellery and watches. Therefore, the action was dismissed in relation to the Class 14 goods.

Further, it was common ground that the relevant public consisted of reasonably well-informed and reasonably observant consumers across all member states, therefore including both an English-speaking and non-English-speaking public. According to established case law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant features, namely the visual, phonetic and conceptual aspects (Matratzen (Case T-6/01)).

The court held that the Board of Appeal was correct to find that the two word elements of the marks had equal importance. As regards both the visual and phonetic aspects, it was commented that the marks both consisted of two words, the second being different although comprising the same number of syllables. Further, both signs began with the same word element ‘beyond’, which will be more likely to attract the relevant public’s attention, as generally the first part of a mark tends to have a greater visual and also phonetic impact than the final part (PAM-PIM’S BABY-PROP (Case T-133/05)). It was held therefore that there was a certain degree of similarity between the marks, going against the Board of Appeal’s ruling.

With regard to the conceptual similarity, for the non-English-speaking public, the Board of Appeal had erred in finding that, because there was no understanding of the words, this meant that the words should be held to be neutral and not similar. Further, it was now found that the word 'vintage' was in fact understood by a wide range of the relevant public, being commonly used to describe an aesthetic style. 'Retro' was used similarly, resulting in both words having an evocation of the past and therefore held to be similar.

For the English-speaking part of the public, the court agreed with the Board of Appeal’s finding that this section of the public would understand a distinction between 'retro' and 'vintage'; however, the court held that there was not enough of a distinction to dispel a finding of conceptual similarity.

Following the overturning of the Board of Appeal’s ruling in relation to the similarity of the marks, it ensued that the court went against the contested decision and found a likelihood of confusion on the part of the non-English-speaking public. In relation to the English-speaking public, the Board of Appeal's decision was analysed, resulting in a finding that the board had not provided sufficient reasons as regards the global assessment of the likelihood of confusion, as required by Article 75 of the regulation. Due to this breach of obligation, the court annulled the Board of Appeal’s finding for this section of the relevant public.

This decision provides a useful reminder of the case law on Article 8(1)(b) of the regulation, in particular regarding how to analyse how marks may be viewed across the European Union. It also serves as an advert for the powerful tool of Article 75 of the regulation and the importance of reviewing a judgment to ensure that sufficient reasoning has been provided.

Verity Ellis, D Young & Co LLP, London

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