Gucci successfully opposes registration of G mark

European Union
In Emram v Office for Harmonisation in the Internal Market (OHIM) (Case T-187/10, May 10 2011), the General Court has upheld a decision of the First Board of Appeal of OHIM to refuse, and the opposition of Guccio Gucci SpA in relation to, the registration of G LINE in respect of goods in Classes 9, 18 and 25 of the Nice Classification.

In October 2001 Maurice Emram filed a Community trademark (CTM) application for the following mark:

The application was published in September 2003. Gucci opposed the application on the basis of the marks reproduced below:


CTM



Mark registered in Italy



Three unregistered marks used, notably, in France, Italy and the United Kingdom

In March 2006 the Opposition Division of OHIM upheld the opposition. On appeal by Emram, the Second Board of Appeal of OHIM annulled the Opposition Division's decision for lack of evidence of the well-known character of the unregistered marks, and referred the matter back to the Opposition Division.

In July 2008 the Opposition Division rejected Gucci's opposition on the basis of the absence of:

  • likelihood of confusion between the application and Gucci's registered marks; and
  • Gucci's right to prohibit the use of Emram's mark in the United Kingdom and Italy conferred by the unregistered marks.
In February 2010 the Board of Appeal annulled the decision and rejected the application for the following reasons:

  • the marks were similar;
  • Gucci's registered marks were well known to the average consumer as being an abbreviation of 'Gucci'; and
  • the goods were similar.
Accordingly, the board concluded that the average consumer could be confused by, or perceive an economic link between, Gucci and the mark applied for.

Emram appealed but the General Court upheld the decision, finding that:
  • the board’s decision was reasoned;
  • the adversarial principle had been respected; and
  • there was no distinction between the global appreciation of the likelihood of confusion between a mark composed of a single letter and that of a mark composed of a word, name or stylised word.
According to the General Court, the similarities between the marks and the goods must be taken into consideration when assessing the likelihood of confusion. The weight of each factor to be taken into account in the appreciation, notably the visual, phonetic and conceptual aspects of the marks, may vary. The phonetic and conceptual aspects of marks composed of the same letter or series of letters or words are identical. Therefore, it is of the upmost importance to ensure that a later mark is sufficiently visually different from an earlier registered mark.

The General Court found that, in this case, the graphic differences between the marks were not sufficient to overcome the impression of visual similarity, even if the degree of similarity was lesser in the case of Gucci's CTM registration compared to its Italian trademark. The General Court also found that the registered marks and the application created a general impression of similarity.

The General Court considered that the average consumer could confuse, and even associate, the application with Gucci's marks, given the similarity between the marks and the fact that it was widely known that the capital letter 'G' was an abbreviation of Gucci's name and brand.

The General Court took into account the fact that:
  • it was frequent in the fashion industry for a brand to have several configurations depending on the period or the products; and
  • the average customer rarely had the opportunity directly to compare different marks and needed to rely on imperfect recollection.
As a result, the General Court held that the relevant public could either confuse or associate the marks.

According to the court, the same conclusion was reached when considering the interdependence principle, as confusion could arise even if the similarity between the marks was low, when that of the products bearing the marks was high, as in this case.

This case is a reminder that the greater the reputation and public goodwill of the prior mark, the more likely the analysis of the court will move from the question of the similarity of the goods and services to that of confusion and association between the providers of the goods and services.

Julie-Anne Lucchetti and Chris McLeod, Squire Sanders Hammonds, London

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