Yves Saint Laurent fails to prevent registration of monogram

Switzerland

Yves Saint Laurent opposed the registration of the trademark SL SKINNY LOVE (depicted below on the right) based on its registered monogram YSL (depicted below on the left). Both trademarks covered clothing, among other things, in Class 25.

 

The Swiss Federal Administrative Court agreed with the Swiss Federal Institute of Intellectual Property that there was no likelihood of confusion between the two trademarks (Case B-2296/2014).

The Administrative Court confirmed the practice that the similarity of short signs and acronyms should be assessed primarily on the basis of visual similarities and differences, allowing consumers to detect even small differences. Changing, omitting or adding just one letter can make a difference. In the present case, the contested trademark consisted of the elements 'SL' and 'Skinny Love', and thus omitted the first letter 'Y' of the opponent's trademark YSL. The trademarks also had different meanings, since 'YSL' is the acronym of the name Yves Saint Laurent and 'SL' is the abbreviation of 'Skinny Love'. Therefore, and even considering the fact that consumers pay more attention when buying clothes, shoes and other fashion items, SL SKINNY LOVE was sufficiently different from the YSL monogram.

In Swiss opposition proceedings, the legal assessment is limited to a likelihood of confusion analysis and does not take into account the fame of the trademark (unlike the concept of 'trademark with a reputation' for Community trademarks) or unfair competition issues. However, the proven well-known character of a mark in an opposition can still lead to a broader scope of protection for that trademark. In this case, the opponent failed to prove the well-known character of YSL not only with regard to fashion designer Yves Saint Laurent, but also with regard to fashion items. Interestingly, the court held that, even if broader protection had applied, the protection of the monogram YSL would not encompass the truncated trademark element 'SL' and the monogram style of writing.

In summary, there was no likelihood of confusion between the monograms due to their dissimilar overall appearance, which was due mainly to the differences between the signs’ beginnings and meanings.

Markus Frick and Benno Fischer, Walder Wyss Ltd, Zurich

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