EU Court Backs Armani in Trade Mark Dispute

Trade marks with a reputation such as the Monster Energy claw, the McDonald’s golden arches and Louis Vuitton’s famous LV often rely on the distinct reputation of their marks to successfully challenge lookalike brands. This arose recently in an EU General Court case involving the fashion house, Armani. Read our analysis of the case, written by our Intellectual Property team.

Following our recent article on Louis Vuitton’s success before the EUIPO in cancelling a competitor’s trade mark for ‘Loves Vittorio’, a new development has emerged in the fashion sector. Armani has now enjoyed an equal triumph in a trade mark dispute. The General Court of the EU has found in Armani’s favour in an EU trade mark (EUTM) opposition. The case involved Armani challenging a similar application to its well-known eight horizontal black stripes logo. Despite finding in Armani’s favour, the General Court held that there is a low degree of visual similarity between the competing marks. We consider the impact of the General Court ruling for trade mark owners in the fashion sector.

Background

Shenzhen City Chongzheng Technology Co Ltd filed a EUTM application for the below figurative sign in December 2020.

The application covered a wide range of goods in Class 9 including “Headphones” “Earphones” “usb chargers” and “electrical plugs.” Armani filed an opposition against the above EUTM application in April 2021. The opposition was based on Armani’s earlier EUTM Number 015743891 for the figurative sign below.

This mark was registered in January 2017 and protected a wide range of electrical goods in Class 9 and clothing goods in Class 25, among others. The opposition was dismissed at first instance by the EUIPO. Armani appealed to the EUIPO Board of Appeal.

Board of Appeal

The EUIPO Board of Appeal also dismissed the opposition. It held that the overall impression created by the competing marks was different, irrespective of the level of attention of the relevant public. As a result, the Court found Armani’s arguments ineffective. This included claims about the identity or similarity of the goods and the likelihood of confusion, particularly due to the enhanced distinctiveness of Armani’s earlier mark. Armani appealed this decision to the EU General Court.

General Court

The General Court upheld Armani’s appeal and dismissed the Board of Appeal decision. It held:

• The competing marks are both composed of the same number of horizontal black stripes on a white background and have a V-shape. While it is correct that those characteristics are represented in a somewhat different manner in each of the two marks, those differences are minimal and cannot lead to a different overall visual impression.

• The use of the eagle’s head in Armani’s mark and the horizontal line in the lower part of the mark applied for, are elements of secondary importance. Both marks will be perceived and memorised as a V-shape, of comparable thickness, emerging from the horizontal black lines juxtaposed against a white background.

• Consumers will only retain an imperfect image of the signs in their memory, which reinforces the finding of a rather low visual similarity between the competing signs.

Overall, the Court concluded that there is a low degree of visual similarity between the competing trade marks. However, it was satisfied that the Board of Appeal made an error. It failed to carry out a global assessment of the likelihood of confusion due to its incorrect finding of an overall difference between the competing marks. Consequently, it annulled the Board of Appeal decision.

Comment

Although the General Court decision represents a win for Armani, it could be appealed to the Court of Justice of the EU. Therefore, this decision may not represent the end of the matter. The decision does however serve as a reminder that it is possible for rights holders to be successful in trade mark oppositions and enforcement actions, even where there is a low degree of visual similarity between the signs at issue.

The General Court held that if there is at least partial similarity between the competing signs in terms of one or more of their visual, phonetic or conceptual aspects, then that was sufficient for the Board of Appeal to conduct a global assessment of the likelihood of confusion. For trade marks with a reputation also, like the Louis Vuitton LV logo and the Armani logo discussed in this article, where reputation is claimed in opposition proceedings, the threshold for establishing similarity is lower. In those circumstances, it is sufficient if the public establishes a link between the signs and faint similarity will suffice. This can therefore be a very effective ground for trade mark owners to rely on in opposition proceedings rather than the more widely utilised and well-known ground of similarity giving rise to a likelihood of confusion.

For more information and expert advice, contact a member of our Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.