General Court: in clothing sector, it is common for the same mark to be configured in various ways

European Union

In Wolverine International LP v Office for Harmonisation in the Internal Market (OHIM) (Case T-642/13, October 15 2015), the General Court has confirmed a decision of the Fourth Board of Appeal in invalidity proceedings.

On October 10 2005 Wolverine International LP obtained an international registration designating the European Community for the following figurative sign, covering goods and services in Class 25 of the Nice Classification:

  

On September 20 2010 the predecessor-in-title of the intervener, BH Store BV, filed a request for a declaration of invalidity of the mark at issue. It based this request on the earlier word mark SHE, registered on November 8 2000 for goods in Class 25, and the following figurative mark, registered on April 25 2000 for goods and services in Classes 3, 9, 16, 18 and 25:

        

The Cancellation Division of OHIM rejected the request on the grounds that there was no likelihood of confusion within the meaning of Article 8(1)(b) of the Community Trademark Regulation (207/2009). It ruled that the goods at issue were similar, but that the marks were only visually and phonetically similar to a low degree and that they were not conceptually similar.

The Fourth Board of Appeal of OHIM annulled the decision of the Cancellation Division and ruled that there was a likelihood of confusion. The board considered the goods at issue to be similar or identical. It also found that the marks were phonetically identical, and visually and conceptually similar. In addition, it ruled that, although the earlier word mark had a low degree of distinctive character, this did not exclude a likelihood of confusion.

To prove the genuine use of the earlier word mark, the intervener submitted invoices and catalogues. The applicant argued that the documents provided did not prove genuine use because they contained little information on the use of the earlier word mark, in particular because not all of the data referred to goods in Class 25. The court disagreed, stating that the fact that the catalogues also offer for sale goods other than those for which the earlier mark was registered did not undermine the probative nature of those catalogues, since it could not be disputed that they primarily offer for sale goods for which the earlier word mark was registered.

Moreover, the catalogues were in the German language and thus were clearly intended for the German-speaking public. It was therefore clear from the catalogues that the earlier word mark had been used in the German territory for the goods at issue throughout the relevant period.

With regard to the invoices, the General Court ruled that they indicated a large volume of purchases which showed a fairly extensive use of the earlier word mark. It stated that the invoices covered the whole of the relevant period, which reflected an ongoing use during that period. The fact that the invoices were sent to suppliers and not end-consumers did not influence the fact that they demonstrated the extent of use of the earlier word mark. Moreover, the invoices were detailed enough to determine which goods were sold.

With regard to the relevant public, the board had correctly noted that the clothing sector comprises goods which vary widely in quality and price. Therefore, a consumer might be more attentive whilst buying a particularly expensive item of clothing, yet the same attention cannot be presumed with regard to all goods in that sector.

With regard to the comparison of the goods, according to the court, the board was right to consider the goods included in Class 25 to be partly identical and partly similar. It ruled that both marks covered clothing and footwear in the same way. Regarding headgear, it held that it had the same function as the goods at issue and shared the same distribution channels and sales outlets.

With regard to the similarity of the signs, the board had considered that the signs were visually similar given the fact that they have the same letter sequence ‘she’, and ruled that the letter sequence ‘cu’ did not have a significant influence on the perception of the mark by the average consumer. The applicant argued that the board was wrong to divide the mark into a word element and a figurative element.

The General Court confirmed the board’s decision and stated that the mark at issue was clearly divided into two parts, ‘cu’ and ‘she’. Not all of the relevant public would analyse the curved line as the stylised script of the element ‘cu’. Therefore, the marks at issue were visually similar. For the phonetic comparison, the figurative element was not taken into account. Therefore, the board was right to consider the signs to be phonetically identical. Conceptually, the marks were also to be considered similar, because they shared the word ‘she’ and the figurative element did not change or neutralise the meaning of the word element.

The applicant argued that, when buying clothes, consumers usually make their choice visually. This, however, did not undermine the conclusion of the Board of Appeal that the signs are, in any event, visually similar. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it was only one factor among others involved in that assessment. The board was correct to consider that the low distinctiveness of the earlier mark did not automatically exclude any likelihood of confusion, given the similarity between the signs and the goods.

The General Court also upheld the board’s finding that the mark at issue could easily be perceived as a variation of the earlier mark. It is common in the clothing sector to configure the same mark in various ways for different types of products. It is also common for clothing manufacturers to use sub-brands to distinguish their various lines from one another. The fact that the mark at issue consisted of the same word sign as the earlier word mark and differed from it solely by a figurative element without particular meaning could be perceived as a particular configuration of the earlier word mark.

The applicant’s action was dismissed.

Moïra Truijens, Hoogenraad & Haak, Amsterdam

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