Watch out! Longines case sends warning to owners of famous complex marks
In Compagnie des montres Longines, Francillon SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-76/13, February 12 2015), the General Court has upheld a decision of the Fifth Board of Appeal of OHIM dismissing an opposition filed by famous watchmakers Longines against Community trademark (CTM) application No 9260597.
From a confusion perspective, this decision does not significantly deviate from settled case-law, establishing that there is no likelihood of confusion between the marks due to a lack of phonetic similarities and a low degree of visual and conceptual similarity.
However the decision then goes on to discuss the economic link between the marks. The court found that, as the marks at issue differ visually and conceptually, no link in the mind of the relevant section of the public between those marks would be made. Such reasoning could, however, imply that the dilution of a figurative element that is part of a complex mark and which has low distinctive character or has become descriptive, could prevent owners of famous marks from successfully opposing marks. This in time could lead to a dispersion of the identity of such marks because of the impossibility to demonstrate the existence of an economic link between the marks.
On July 20 2010 Staccata Srl filed a CTM application for the figurative sign shown below, covering goods in Classes 9 and 14 of the Nice Classification, including “horological and chronometric instruments”.
On December 20 2010 Longines filed an opposition against the application for all the goods covered. Longines claimed that there was a likelihood of confusion on part of the relevant public due to the similarity between the signs and identity between the goods at issue. Longines based its opposition on a likelihood of confusion under Article 8(1)(b) and Article 8(5) of the Community Trademark Regulation (207/2009) with respect to the figurative and combined word-and-device marks depicted below, covering goods in Classes 9 and 14:
On November 9 2011 the Opposition Division of OHIM rejected the opposition in its entirety. On appeal this decision was upheld by the Fifth Board of Appeal on November 26 2012.
On further appeal by Longines, the General Court agreed with the board and found that, when considering goods in Classes 9 and 14, these goods were aimed at anyone, including members of the general public and professionals, including scientists. The court held that the level of attention of the relevant public in the present case should not be restricted to a higher level because the broad range of goods covered clearly targeted different consumers with various levels of attention.
Comparing the marks, the court held that were no phonetic similarities between them and that there was only a low degree of visual and conceptual similarity. The court explained that it could not be found that a graphic element, consisting of extended wings, was dominant either in the mark applied for or in the earlier marks. The letters 'Q' and 'M' situated in the middle of the mark applied for, as well as the word 'quartodimiglio' at the top of that mark, would have a significant impact and thus be remembered by consumers. In the earlier marks, the word 'Longines' situated at the top of the marks would also be easily remembered by the relevant consumers.
In conclusion, the court found that there was no likelihood of confusion or association under Article 8(1)(b), even where the goods at issue are identical and despite a certain level of conceptual similarity between the marks.
Addressing Longines’ claim under Article 8(5), the court found that Longines had successfully demonstrated the reputation of its earlier marks consisting of the word 'Longines', combined with the figurative element depicting a stylised “winged hourglass”, in particular for horological and chronometric instruments in Class 14.
In the context of assessing reputation, the court acknowledged that the advertisements provided by Longines showed its earlier combined word-and-device marks, and/or the goods covered by these marks. These were published in different kinds of magazines or newspapers, in various languages which were marketed throughout the European Union. In addition, most of those publications targeted consumers from the general public and regularly featured celebrities from the world of culture or sport in the marketing campaigns. The judges found that this showed that Longines benefited from its cooperation with globally known personalities, including actors, tennis players, sportspersons and models. Finally, many of those advertisements were displayed at various sports competitions, some of which were broadcasted on television.
However, with respect to Longines’ figurative mark depicting a “winged hourglass” on its own, the court took the view that there was no evidence showing that consumers were accustomed to solely focusing on the “winged hourglass” figurative element. The judges held that Longines did not demonstrate that the earlier figurative mark without the word 'Longines' enjoyed a reputation. Visually the word 'Longines' was the dominant element in the overall impression created by the earlier mark. The court found that, for a significant part of the relevant public, it was the actual use of the word 'Longines' on the goods themselves that allowed to identify the goods and distinguish them from those of other manufacturers.
Concluding its assessment of Longines’ claim under Article 8(5), the court held that, notwithstanding the reputation of the earlier marks and the identity of the goods covered, the marks at issue differ visually and conceptually to such an extent that no link in the mind of the relevant section of the public would be made. Therefore the registration and use of the mark applied for would not to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks under Article 8(5).
This decision, particularly if appealed and upheld by the Court of Justice of the European Union, serves as a reminder to owners of combined word-and-device marks to ensure that they use their device or logo on its own and to keep significant amount of evidence of such use in case they ever need to provide documentation to support a claim under Article 8(5). In particular, owners of exclusive luxurious brands should therefore put emphasis on the use and registration of their logo on its own, especially if they consider it as an important part of their brand identity and fear that the use of similar devices by third parties could dilute the strength and attractiveness of their brand.
Frédérique Bodson, Locke Lord (UK) LLP, London
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