La norma di riferimento è l’art. 6.1.c) della dir. 2008/95 (il titolare non può lvietare l’uso altrui del proprio marchio “se esso è necessario per contraddistinguere la destinazione di un prodotto o servizio, in particolare come accessori o pezzi di ricambio”).
La CG , dopo aver detto che la norma è più restrittiva di quella corrispondente della dir. 20115/2436 (non può vietare l’uso “del marchio d’impresa per identificare o fare riferimento a prodotti o servizi come prodotti o servizi del titolare di tale marchio, specie se l’uso del marchio è necessario per contraddistinguere la destinazione di un prodotto o servizio, in particolare come accessori o pezzi di ricambio.”), conclude che tocca al giudice nazionale stabilire se nel caso de quo sia invocabile o no.
Nessun aiuto per il giudice nazionale, dunque.
Letteralmente non è invocabile. DAto però che per la successiva dir. 2436 lo sarebbe , è da vedere se ciò possa indurre ad una latissima interpretazione tale da renderla applicabile.
Si potrebbe invece pensare di invocare la lett. b) (indicaizoni descrittive etc.). Infatti il marchio ZARA sul prodotto dato a premio serve a dare un ‘idea del suo valore economico e/o attrattivo, per indurre i potenziali consumatore a partecipare al concorso.
L’ufficio esclusde la confondibilità ordinaria, soprattuto per l’assenza di vicinanza concettuale: << A livello concettuale, i segni sono dissimili poiché saanno associati a significati diversi veicolati dagli uccellini e dalla farfalla rispettivamente. Di fatto, la semplice appartenenza alla specie animale non è in alcun modo sufficiente a evocare una similitudine concettuale. Infatti, per giurisprudenza ormai consolidata, il mero fatto che due simboli possano essere raggruppati sotto un termine generico comune non li rende in alcun modo simili dal punto di vista concettuale. Ad esempio, il Tribunale ha ritenuto che, sebbene una mela e una pera possano avere caratteristiche comuni, trattandosi in entrambi i casi di frutti strettamente correlati tra loro in termini biologici e simili in quanto a dimensioni, colore, consistenza, tali caratteristiche comuni incidono in maniera davvero limitata sull’impressione complessiva. Di conseguenza, il Tribunale ha concluso che tali elementi sono insufficienti a controbilanciare le evidenti differenze concettuali esistenti tra i marchi, constatazione questa che li ha resi concettualmente dissimili (31/01/2019, T-215/17, PEAR (fig.) / APPLE BITE (fig.) et al., EU:T:2019:45, § 77-79)>>.
Giudizio dubbio: i) intanto si tratta non solo di animali ma di animali che volano; ii) poi la dimensione probabilmente ridotta rende difficile cogliere subito la differenza , o almeno di coglierla in maniera tale da far pensare a due aziende in concorrenza invece che a varianti di un’unica idea creativa nella scelta dei segni distintivi aziendali.
Nè c’è distintività accresciuta (sempre nella confondibilitò ordianria, non da rinomanza) : <<Infatti, il carattere distintivo accresciuto richiede il riconoscimento del marchio da parte del pubblico di riferimento e, nell’effettuare tale valutazione, occorre tenere conto, in particolare, delle caratteristiche intrinseche del marchio, compreso il fatto che esso contiene o meno un elemento descrittivo dei prodotti o dei servizi per i quali è stato registrato; la quota di mercato detenuta dal marchio; l’intensità, l’estensione geografica e la durata dell’uso di tale marchio, l’entità degli investimenti effettuati dall’impresa per promuovere il marchio; la proporzione del pubblico di riferimento che, grazie al marchio, identifica i prodotti o i servizi come provenienti da una determinata impresa; e dichiarazioni di camere di commercio e d’industria o di altre associazioni professionali (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).
Inoltre, le prove dell’acquisizione di un carattere distintivo accresciuto in seguito all’uso devono riguardare sia (i) l’area geografica di riferimento sia (ii) i prodotti e/o servizi pertinenti. La natura, i fattori, le prove e la valutazione del carattere distintivo accresciuto sono gli stessi della notorietà, anche se la soglia per la constatazione di un carattere distintivo accresciuto può essere inferiore.
Quanto al contenuto delle prove, maggiori sono le indicazioni che esse forniscono circa i vari fattori dai quali si può dedurre l’elevato carattere distintivo, tanto più rilevante e determinante. In particolare, le prove che, nel complesso, forniscono scarsi dati e informazioni quantitativi o nessuna, non saranno idonee a fornire indicazioni su fattori vitali quali la conoscenza dei marchi, la quota di mercato e l’intensità dell’uso e, di conseguenza, non saranno sufficienti per affermare l’esistenza di un carattere distintivo accresciuto>>.
Giudicando in base alle stesse prove (sempre profilo interessante per i pratici), è poi rigettata pure la domanda basata sulla rinmmanza.
Applica la regola, posta da Jack Daniel’s Properties, Inc. v. VIP Products del 2023, per cui il Roger test (esonero da legge marchi se c’è A) vero free speech/rilevanza artistica, e B) assenza di esplicit misleading del consumatori) non si applica quando il segno altrui è usato come marchio.
REgola di buon senso, emergente pure dal nostro art. 21 cod. propr. ind. (ove però manca una previsione regolante il conflitto tra marchio ed esercizio della livbertà di espressione)
L’ufficio esclude la confondibilità ordinaria ex art. 8.1, EUTMR per carenza di affinità merceologica (corde e packaging per imballaggio vs. ceramiche etc.)
Riconosce però la tutela allargata per ingiustificato vantaggio dalla notorietà altrui ex art. 8,.5 EUTMR
<<It has to be recalled that the contested goods have a link to the earlier reputed goods and services, as explained in section c) above. Furthermore, the earlier mark enjoys a high reputation in the European Union in connection with video games. Consequently, and according to case-law, earlier marks with a strong reputation will be recognised in almost any context, particularly as a result of their above-average quality, which reflects a positive message, influencing the choice of the consumers as regards goods or services of other producers/providers.
Furthermore, it is important to underline that the earlier trade mark is inherently distinctive in relation to the goods and services they are registered for. This fact makes it even more likely that the applicant will attempt to benefit from the value of the opponent’s sign since such a distinctive trade mark as “Lara Croft” will be recognised in almost any context. The mere fact that the applicant changed the position of two letters will in no way impede such a recognition, as the structure of the contested sign – female Christian name and last name – is still identical to the earlier right.
An unfair advantage occurs when a third party exploits the reputation of the earlier mark to the benefit of its own marketing efforts. In practice, the applicant ‘hooks onto’ the renowned mark and uses it as a vehicle to encourage consumer interest in its own products. The advantage for the applicant is a substantial saving on investment in promotion and publicity for its own mark, since it benefits from that which has made the earlier mark famous. This is unfair because it is done in a parasitic way (08/02/2002, R 472/2001 1, BIBA/ BIBA).
Furthermore, in view of the earlier trade mark special attractiveness, it may be exploited even outside its natural market sector, by merchandising (as demonstrated by the opponent). Hence, as the earlier mark has a high reputation and the commercial and as especially the merchandising context in which the goods are promoted are very close, the Opposition Division can accept the opponent’s claim that consumers of goods in Class 9 and in Class 22 make a connection between the applicant’s goods and the reputed mark Lara Croft used by the opponent.
The opponent has invested large sums of money and effort in creating a certain brand image associated with its trade mark, by creating a fictious character which attracts the admiration of the public, inciting them to be a close as possible to this character (for instance women dressed like Lara Croft in fan events), and one way of doing this is by buying merchandising goods, bearing the name Lara Croft.
This image associated with a trade mark confers on it an – often significant – economic value, which is independent of that of the goods for which it is registered. Consequently, Article 8(5) EUTMR aims at protecting this advertising function and the investment made in creating a certain brand image by granting protection to reputed trade mark, irrespective of the similarity of the goods or services or of a likelihood of confusion, provided it can be demonstrated that use of the contested application without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.
The notion of taking unfair advantage of distinctiveness or repute covers cases where the applicant benefits from the attractiveness of the earlier right by using for its services a sign that is similar (or identical) to one widely known in the market and, therefore, misappropriating its attractive powers and advertising value, or exploiting its reputation, image and prestige. This may lead to unacceptable situations of commercial parasitism, where the applicant is allowed to take a ‘free ride’ on the investment of the opponent in promoting and building up goodwill for its mark, as it may stimulate sales of its products to an extent that is disproportionately high for the size of its promotional investment. In its judgement of 18/06/2009, C 487/07, L’Oréal, EU:C:2009:378, § 41, 49, the Court indicated that unfair advantage exists where there is a transfer of the image of the mark, or of the characteristics that it projects, to the goods identified by the identical or similar sign. By riding on the coat-tails of the reputed mark, the applicant benefits from the power of attraction, reputation and prestige of the reputed mark. The applicant also exploits, without paying any financial compensation, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the image of that mark.
The use of the mark applied for in connection with the abovementioned goods will almost certainly draw the relevant consumer’s attention to the opponent’s highly similar and very well-known mark. The contested mark will become associated with the aura of fame that surrounds the Lara Croft brand. Many consumers are very likely to think that there is a direct connection between the goods of the applicant, and the famous Lara Croft character, as the sings are made up of identical letters, or might not even notice the difference.
Article 8(5) EUTMR exists to prevent this type of situation, where one mark takes unfair advantage of its distinctive character and repute. The applicant could take unfair advantage of the fact that the public knows the trade mark Lara Croft so well, in order to introduce its own similar trade mark without incurring any great risk and the cost of introducing a totally unknown trade mark to the market.
On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.
The opponent also argues that use of the contested trade mark would be detrimental to the repute of the earlier trade mark.
As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply>>.
Anteriorità opposta: ROYAL nonchè ROYAL UNIBREW (ma l’esame ha riguardato solo il primo segno)
Giustamente il BoA esclude confondibilità data la assenza di distintività di ROYAL (“segno di uso comune negli usi costanti del commercio”, se si applicasse il ns diritto, art. 13.1A cpi)
<<Overall assessment of the likelihood of confusion
45 The global assessment of the likelihood of confusion implies some interdependence between the relevant factors, in particular between the similarity of the signs and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the signs, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 18/12/2008, C-16/06 P, Mobilix, EU:C:2008:739, § 46; 05/03/2020, C-766/18 P, BBQLOUMI (fig.) / HALLOUMI, EU:C:2020:170, § 69).
46 It is also settled case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore trade marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).
47 On the other hand, where the signs overlap in a descriptive, non-distinctive or weak element, the global assessment of the likelihood of confusion will not often lead to a finding that that likelihood exists (12/06/2019, C-705/17, ROSLAGSÖL, EU:C:2019:481, § 55).
48 The ratio legis of trade mark law is to strike a balance between the interest of the proprietor of a trade mark in safeguarding its essential function, and the interests of other economic operators in having signs capable of denoting their goods and services. Therefore, excessive protection of marks consisting of elements that are devoid of any distinctive character or have a very weak distinctive character could adversely affect the attainment of the objectives pursued by trade mark law, if the mere presence of these elements in the signs at issue led to a finding of a likelihood of confusion without taking into account theremainder of the specific factors in the case (18/01/2023, T-443/21, YOGA ALLIANCE INDIA INTERNATIONAL, EU:T:2023:7, § 117-118).
49 In the present case, notwithstanding the fact that the goods covered by the signs at issue are identical or similar, the low degree of visual and phonetic similarity and at most low degree of conceptual similarity between them, in conjunction with the weak distinctiveness of the earlier mark, rule out the possibility that the relevant public might think that the goods at issue come from the same undertaking or from economically linked undertakings.
50 For the part of the public which perceives the contested sign as a conceptual unit clearly referring to the Duke and Duchess of Sussex (namely Prince Harry and Megan Markle), no likelihood of confusion exists, as the conceptual difference between the signs counteracts any visual and phonetic similarities that exist (04/05/2020, C-328/18 P, BLACK LABEL BY EQUIVALENZA (fig.) / LABELL (fig.) et al., EU:C:2020:156, § 74 and the case-law cited).
51 For the remaining part of the public, the coincidence in an allusion to luxury and superb quality (being a result of the common word ‘ROYAL’) is sufficiently outweighed by the additional verbal element ‘SUSSEX’ at the beginning of the contested sign. There is no risk that this difference will not be noted by the consumers. As a result, there is no direct likelihood of confusion. The contested sign will not be taken for the earlier mark (05/02/2007, T‑501/04, ROYAL / ROYAL FEITORIA et al., EU:T:2007:54, § 47-49).
52 The opponent claims that the contested sign will be perceived as a sub-brand of the earlier mark. However, for such an indirect likelihood of association to occur, the trade mark applied for must display such similarities to the earlier mark that might lead the consumer to believe that the sign is somehow connected with the earlier right (and therefore, that the goods covered by it have the same or a related commercial origin). This likelihood of association may occur only if the trade mark applied for shares with the earlier mark characteristics capable of associating the signs with each other (by analogy 15/03/2023, T‑174/22, Breztrev / Brezilizer et al., EU:T:2023:134, § 83; 25/10/2023, T‑511/22, HPU AND YOU (fig.) / DEVICE OF THREE HEXAGONS (fig.) et al., EU:T:2023:673, § 80). If the similarity between the signs resides only in an element that has a minimal degree of distinctiveness, such an association is not likely. For such an association to occur the signs would need to overlap in a distinctive element, or at least in the structure and/or stylisation. Average consumers do not usually take one component of a composite trade mark and compare it with another mark (even less if it is weakly distinctive).
53 The earlier mark has a low degree of inherent distinctiveness. It is apparent from the case-law, that such marks enjoy less extensive protection and, therefore, the likelihood of confusion is, in such cases, not likely (12/05/2021, T‑70/20, MUSEUM OF ILLUSIONS (fig.) / MUSEUM OF ILLUSIONS (fig.), EU:T:2021:253, § 91-92, 95).
54 Bearing in mind the above, the Board finds that no likelihood of confusion exists on the basis of the inherent distinctiveness of earlier international registration No 854 092 designating the European Union for any part of the public.
55 As a result, the claim of enhanced distinctive character and reputation of the earlier mark needs to be examined (as it might substantially affect the global assessment of likelihood of confusion)>>.
Rimanda però per l’esame dell’altro segno e della domanda basata sulla rinomanza (improbabilissima , direi, per tali sgni)
Resta da capire come secondo il diritto internazionale si possa impedire lo sfruttamento della notorietà altrui (i duchi del Succesx, Harry e Meghan), a prescindere da loro registraizoni come marchio
<<The global assessment of the likelihood of confusion
77 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered by those marks. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
78 Furthermore, the degree of distinctiveness of the earlier mark, which determines the scope of the protection conferred by that mark, is one of the relevant factors to be taken into account in the context of the global assessment of the likelihood of confusion. The more distinctive the earlier mark, the greater will be the likelihood of confusion, with the result that marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; see also judgment of 29 March 2023, Machková v EUIPO – Aceites Almenara (ALMARA SOAP), T‑436/22, not published, EU:T:2023:167, paragraph 96 and the case-law cited). However, in the light of the interdependence between the factors to be taken into account, the existence of a likelihood of confusion cannot automatically be ruled out where the distinctive character of the earlier mark is weak (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 70 and the case-law cited).
79 In practice, where the earlier mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods or services at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, exists (judgments of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55; of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53; and of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 121). Where the elements of similarity between two signs at issue arise from the fact that they have a component with a low degree of inherent distinctiveness in common, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgments of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79 and the case-law cited, and of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited).
80 In paragraphs 45 to 50 of the contested decision, the Board of Appeal found that, in the light of the identity or various degrees of similarity, from low to high, of the goods at issue, the average degree of visual similarity and conceptual identity between the marks at issue and the average degree of inherent distinctiveness of the earlier mark, the relevant public, the level of attention of which varied from average to high, was likely to believe that the goods covered by those marks came from the same undertaking or, as the case may be, from economically linked undertakings. It added, in paragraph 52 of that decision, that its assessment would not have been different if it had found that the figurative element representing a lion’s head in the earlier mark, or even that mark taken as a whole, had only a low degree of inherent distinctiveness, in the light of the dominant nature of that element in that mark and the interdependence between the various factors to be taken into account in the global assessment of the likelihood of confusion. It took the view that those assessments were not contrary, in the circumstances of the case, to the case-law of the Court of Justice and the General Court.
81 By its fourth complaint, the applicant disputes, in essence, the Board of Appeal’s assessment that there is a likelihood of confusion in the present case. It submits that the marks at issue, although they both consist of the representation of the same concept, namely a lion’s head, create a different overall impression in the mind of the relevant public. In that regard, it relies on the fact that the representation of such a concept is banal and commonplace in the fashion sector and that the earlier mark has only a low degree of inherent distinctiveness, which, in combination with the other factors in the present case, should have led the Board of Appeal to rule out the existence of a likelihood of confusion.
82 EUIPO disputes the applicant’s arguments. However, in the alternative, should the Court take the view that the earlier mark has a low degree of inherent distinctiveness, it states, in essence, that it endorses the applicant’s claim for annulment on the basis of the single plea in law relied on by the applicant, in accordance with the case-law of the Court of Justice and the General Court which ensures that marks with a low degree of inherent distinctiveness are not overprotected (see paragraph 79 above).
83 In that regard, it must, first, be borne in mind that the Board of Appeal made an error of assessment in finding that the earlier mark had an average degree of inherent distinctiveness, whereas that degree of inherent distinctiveness could only be categorised as low (see paragraph 75 above).
84 As regards the applicant’s argument that the Board of Appeal gave undue importance, in the contested decision, to the conceptual identity between the marks at issue in the context of the global assessment of the likelihood of confusion, it must be borne in mind that, according to the case-law, the purchase of goods in Classes 14 and 25 is based, in principle, particularly on their visual aspect. Clothing and clothing accessories, the purpose of which is to embellish the appearance of the human body, are generally marketed in ‘bricks and mortor’ shops or online shops, as the case may be with the help of sales assistants or advisers and, in the light of those particular marketing conditions, the consumer’s choice is mainly made by looking at them. Consequently, the marks covering those goods will normally be perceived visually prior to or at the time of purchase, with the result that the visual aspect is of greater importance in the global assessment of the likelihood of confusion (see, to that effect, judgment of 18 May 2011, IIC v OHIM – McKenzie (McKENZIE), T‑502/07, not published, EU:T:2011:223, paragraph 50 and the case-law cited).
85 In the present case, in the global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal, by finding that there was a higher than average degree of overall similarity between the marks at issue, attached more importance, in paragraph 49 of the contested decision, to the conceptual comparison of those marks than to the visual comparison, in particular in so far as it found that the differences in the stylisation of the marks were of limited importance in the overall impression created by those marks and therefore did not have sufficient impact to assist consumers in decisively distinguishing between the marks.
86 In so doing, it attached too much importance to the conceptual identity between the marks at issue, since, first, and as is apparent from the case-law cited in paragraph 84 above, the choice of the goods at issue is based mainly on their visual aspect and, secondly, the concept represented in the marks at issue, namely a lion’s head, is used in a banal and commonplace way in the commercial presentation or the decoration of goods in the fashion sector.
87 Consequently, the second part of the second complaint must be upheld and the examination of the present action must be continued by taking into account the error of assessment thus noted.
88 In the light of the case-law cited in paragraphs 78 and 79 above and the finding, made in paragraphs 50 and 51 above, that the representation of a lion’s head is a banal and commonplace decorative motif in the fashion sector, in which consumers are regularly faced with such a motif in the commercial presentation or the decoration of the goods, with the result that that motif has lost its capacity to identify the commercial origin of those goods, it must be held that, even though the marks at issue are conceptually identical, that can be of only limited importance in the global assessment of the likelihood of confusion, since the concept in common to which those marks refer is only weakly distinctive in relation to the goods at issue and can therefore contribute only to a very limited extent towards the function of a mark, which is to identify the origin of those goods and to distinguish them from those with a different origin (see paragraphs 47 and 52 above).
89 In view of the weak distinctive character of the concept which is common to the marks at issue and the weak distinctive character of the earlier mark, considered as a whole, the fact that the marks at issue are visually similar to an average degree was not sufficient to enable the Board of Appeal to find, in the contested decision, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even if the goods at issue were identical.
90 Consequently, the applicant’s fourth complaint must be upheld, inasmuch as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
91 In view of all of the foregoing considerations, the single plea put forward by the applicant must be upheld, in so far as it is based on the third complaint (see paragraph 76 above), on the second part of the second complaint (see paragraph 87 above) and on the fourth complaint (see paragraph 90 above) and the contested decision must therefore be annulled in so far as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001>>.
Sono perplesso sia sulla banalità del segno anteriore, che sulla scarsa somiglianza tra i due segni: quindi complessivcamente pure sul giudizio del Tribunale.
<<A global assessment of the likelihood of confusion implies some interdependence between
the factors taken into account and, in particular, between the similarity of the trade marks
and that of the goods or services covered. Accordingly, a low degree of similarity between
those goods or services may be offset by a high degree of similarity between the marks,
and vice versa.
40 Nonetheless, the principle of interdependence is not intended to apply mechanically.
Therefore, while it is true that, by virtue of the principle of interdependence, a lesser degree
of similarity between the goods or services covered may be offset by a greater degree of
similarity between the marks, conversely there is nothing to prevent a finding that, in view
of the circumstances of a particular case, there is no likelihood of confusion, even where
identical goods are involved and there is a weak degree of similarity between the marks at
issue (03/05/2023, T-459/22, Laboratorios Ern, SA vs. EUIPO, EU:T:2023:237, § 96).
41 The goods and services are similar to an average and low degree. The signs are visually,
phonetically and conceptually similar to a low degree. The relevant public will show a
high level of attention at the time of purchase.
42 The differences between the signs, arising from their respective endings and the figurative
representation of the contested sign, are not negligible in the overall impression created by
the marks, especially for a public with a higher level of attention. Accordingly, they are
able to compensate for the visual, phonetic and even conceptual similarities that result from
the presence, at the beginning, of the term ‘BIO’, and the string of letters ‘t-r-o’ common
to all the signs (05/10/2020, T-602/19, NATURANOVE, EU:T:2020:463, § 74).
43 It should be stressed that the similarity between the marks at issue created by their prefix
‘bio’ carries very limited weight, if any, in the context of the global assessment of the
likelihood of confusion. Owing to the lack of distinctive character of that prefix, it cannot
be perceived as an indication of commercial origin. The relevant public’s attention will, as
a result, naturally focus more on the elements which differentiate the signs at issue and, in
particular, on the suffixes ‘tron’ in the earlier marks and ‘trop’ in the contested mark and
on the figurative elements in that mark (03/05/2023, T-459/22, Laboratorios Ern, SA vs.
EUIPO, EU:T:2023:237, § 101).
44 In this respect, it would be against the rationale of the EUTMR to give too much
importance in the assessment of a likelihood of confusion to non-distinctive elements. It
would be inappropriate if a proprietor of a trade mark composed of figurative and/or verbal
elements, where each of them taken alone or in combination are non-distinctive, were in
the position to successfully claim a likelihood of confusion based on the presence of one of these elements in the other sign. This would result in unduly broad protection for
descriptive and non-distinctive elements, which would prohibit other competitors from
using the same descriptive and non-distinctive elements as components of their trade
marks, especially if the use of such a term is in accordance with honest practice in
commercial matters (18/09/2013, R 1462/2012-G, ULTIMATE GREENS / ULTIMATE
NUTRITION, § 62).
45 It follows that excessive protection of marks consisting of elements which, as in the present
case, have weak distinctive character, if any, in relation to the goods or services at issue,
could adversely affect the attainment of the objectives pursued by trade mark law, if, in the
context of the assessment of the likelihood of confusion, the mere presence of such
elements in the signs at issue led to a finding of a likelihood of confusion without taking
into account the remainder of the specific factors in the present case (18/01/2023,
T-443/21, YOGA ALLIANCE INDIA INTERNATIONAL (fig.)/ yoga ALLIANCE (fig.),
EU:T:2023:7, § 117-118)>>.
Lasciua ad es perplessi uil § 29 : <<Furthermore, the mere fact that the marks at issue are composed of the same number of letters, some of which coincide, is not decisive. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (03/05/2023, T-459/22, Laboratorios Ern, SA vs. EUIPO, EU:T:2023:237, § 63)>>.
TAle limitatezza va superata cambiando radicalmente i. segno: non c’è era obbligo di legge di adottare quello de quo.
Infine, per il Board c’è affinità tra la produzione di certi beni e il servizio di retail dei medesimi (così almeno interpretererei il primo punto, non chiarissimo): <<23.Indeed, generally, retail services concerning the sale of particular goods are similar to these particular goods [cioè alla loro produzione? o vendita all’ingrosso?]. Although the nature, purpose and method of use of these goods and services are not the same, they present some similarities, as they are complementary and the services are generally offered through the same trade channels (where the goods are offered for sale) and they target the same public (24/09/2008, T-116/06, ‘O Store’, EU:T:2008:399, § 60)>>.
(segnalazione e link di Marcel Pemsel inIPJKat , critico sulla decisione)
Il caso è intreressante , affrontando un tema di attualità: il rapporto tra diritto di marchio e quello di parodia, da inserire nel diritto alla libetà di parola.
Il problema nasce quando il secondo è esercitato da imprenditori (anche gli artisti allora possono esserlo ed anzi lo sono nel diritto della concorrenza): c’è infatti il sospetto che vogliano lucrare sulla notorietà altrui.
La corte fa qui prevalere il diritto di marchio, appellandosi alla sentenza Supreme Court del 2023 Jack Daniel’s Properties, Inc. v. VIP Products LLC e a un precedente imprtante in del 2 circuito Rogers v. Grimaldi dek 1989 per cui la parodia va bene solo se e fino a che non generi confondibilità:
<<The Supreme Court’s decision in Jack Daniel’s forecloses MSCHF’s argument
that Wavy Baby’s parodic message merits higher First Amendment scrutiny under Rogers. As the Court held, even if a defendant uses a mark to parody the
trademark holder’s product, Rogers does not apply if the mark is used “‘at least in
part’ for ‘source identification.’” Id. at 156 (quoting Tommy Hilfiger Licensing, Inc.,
v. Nature Labs, LLC, 221 F. Supp. 2d 410, 414–15 (S.D.N.Y. 2002)).
Here, MSCHF used Vans’ marks in much the same way that VIP Products
used Jack Daniel’s marks—as source identifiers. As discussed above and
illustrated below, VIP Products used the Jack Daniel’s bottle size, distinctive
squared-off shape, and black and white stylized text to invoke an image of Jack
Daniel’s famous whiskey bottle.
Jack Daniel’s, 599 U.S. 148–49.
Likewise, MSCHF’s design evoked myriad elements of the Old Skool
trademarks and trade dress. Among other things, MSCHF incorporates, with
distortions, the Old Skool black and white color scheme, the side stripe, the
perforated sole, the logo on the heel, the logo on the footbed, and the packaging.
See Part I, above. MSCHF included its own branding on the label and heel of the
Wavy Baby sneaker, just as VIP Products placed its logo on the toy’s hangtag. But
even the design of the MSCHF logo evokes the Old Skool logo. And unlike VIP
Products, MSCHF did not include a disclaimer disassociating it from Vans or Old
Skool shoes. See Jack Daniel’s, 599 U.S. at 150 (noting the dog toy included a
disclaimer that read: “This product is not affiliated with Jack Daniel Distillery”).
A trademark is used as a “source identifier” when it is used “to identify or
brand a defendant’s goods or services” or to indicate the “‘source or origin’ of a
product.” Id. at 156 (alterations adopted). MSCHF used Vans’ trademarks—
particularly its red and white logo—to brand its own products, which constitutes
“quintessential ‘trademark use’” subject to the Lanham Act. Id. at 155 (citation
omitted); see also Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812–13
(mechanic’s use of Harley-Davidson’s bar and shield motif in his logo, despite
the “humorous[]” message, was traditional trademark use subject to the
likelihood of confusion analysis).
Moreover, although MSCHF did not purport to sell the Wavy Baby under
the Vans brand, it admitted to “start[ing]” with Vans’ marks because “[n]o other
shoe embodies the dichotomies—niche and mass taste, functional and trendy,
utilitarian and frivolous—as perfectly as the Old Skool.” Jt. App’x at 353. In
other words, MSCHF sought to benefit from the “good will” that Vans—as the
source of the Old Skool and its distinctive marks—had generated over a decades-
long period. See Jack Daniel’s, 599 U.S. at 156. Notwithstanding the Wavy Baby’s
expressive content, MSCHF used Vans’ trademarks in a source-identifying
manner. Accordingly, the district court was correct when it applied the
traditional likelihood-of-confusion test instead of applying the Rogers test>>.
La composizione del conflitto di interssi è ragionevole: ok alla parodia e alla libertà di espressine, ma in termini chiari e non equivoci (cioè senza alcun rischio di confondibilità).
La parodia come interesse antagonista della privativa di marchio è tema ancora non affrontato sistematicamente.
Pur se non espressamente previsto (art. 14 dir. 2015/2436; a differenza dal diritto di autore: dir. 29-2001 art. 5.3.k), è però in generale da ammettere. Resta il compito di individuarne i confini e cioè di conciliarlo con il diritto di marchio.
Si tratta del marchio del noto alberello deodorante di largo uso negli autoveicoli.
responsabilità diretta, no: <<In Tiffany, the Second Circuit concluded that eBay did not directly infringe on Tiffany’s
trademark where it resold genuine Tiffany goods. Tiffany, 600 F.3d at 103. Tiffany argued that
some of the goods being sold on eBay were counterfeit, which the Second Circuit explained “is
not a basis for a claim of direct trademark infringement against eBay, especially inasmuch as it is
undisputed that eBay promptly removed all listings that Tiffany challenged as counterfeit and
took affirmative steps to identify and remove illegitimate Tiffany goods.” Id. The Second Circuit
continued, “[t]o impose liability because eBay cannot guarantee the genuineness of all of the
purported Tiffany products offered on its website would unduly inhibit the lawful resale of
genuine Tiffany goods.” Id.
Although Plaintiffs allege that Meta did not promptly remove the infringing products from
its websites, there are no allegations that Meta “placed” the infringing marks on any goods. 15
U.S.C. § 1127(1)(A); see also Lops v. YouTube, LLC, No. 3:22-CV-843, 2023 WL 2349597, *3
(D. Conn. Mar. 3, 2023) (footnote omitted) (“[T]he exhibits indicate that the videos were created
or posted by third parties rather than by YouTube. But YouTube cannot be subject to direct
liability for trademark infringement based on videos uploaded by third parties”);
Nike, Inc. v. B&H Customs Servs., Inc., 565 F. Supp. 3d 498, 508 (S.D.N.Y. 2021) (“[T]he
infringer must have some intention to sell, advertise, or distribute the infringing product or service
in order for strict liability to attach. Mere unwitting transportation of another’s goods is not enough . . . “). As such, the Court grants Meta’s motion and dismisses the direct liability claims>>.
ma contributory liability, si, visto che Meta sapeva delle dopcumentate contestazioni dell’attore:
<<Plaintiffs’ allegations are different from those in Business Casual Holdings because Plaintiffs allege that Meta did not remove the infringing post or products from Facebook or Instagram until Plaintiffs filed their original complaint with this Court. See Dkt. No. 13 at ¶¶ 114-
15, 117, 119, 121. Plaintiffs allege that even after they notified Facebook and Instagram of the alleged infringement, both websites advertised and offered the infringing products. See id. at ¶¶ 110. Accepting Plaintiffs’ allegations as true, they have sufficiently stated a contribution claim as they allege that Meta had knowledge of the alleged infringement and instead of removing the posts or products from its websites, it continued to advertise the products. Thus, the Court denies Meta’s motion to dismiss>>.
La sentenza riproduce pure i marchi a confronto (p. 48-49), ravvisandone la sufficiente confondibilità per rigettare l’istanza di dismiss di Meta e per proseguire il processo
Si dimostra sempre difficile provare la propria notorietà a livello europeo: qui però, si badi, allo scopo di escludere confondibilità con il previo segno della casa orologiaia svizzera. Si v. la parte VI “Public perception and knowledge of Lewis Hamilton”.
Non è infatti discussa la questione del se ricorrsse uan notirrietà vicile del corridore nel 2015, anno di deposiuto del marchio della casa orologiaia. Ma una norma come nil n. art. 8.3 cpi nella UE non esiste. pur se la giurisprudenza di fatto ha posto una regola analoga ma non uguale (diritto di continuare ad usare mna no ndi impedire la registaszione altrui): <<§ 61 In accordance with case-law, famous persons enjoy special protection when applying for trade marks. Insofar as their name is recognized, this recognition neutralizes any similarity with other signs which, under normal circumstances, would lead to a likelihood of confusion (24/06/2010, C-51/09 P, Barbara Becker, EU:C:2010:368; 02/12/2008, T-212/07, Barbara Becker, EU:T:2008:544; 17/09/2020, C-449/18 P & C-474/18 P, MESSI (fig.) / MASSI et al., EU:C:2020:722; 26/04/2018, T-554/14, MESSI (fig.) / MASSI et al., EU:T:2018:230; 16/06/2021, T-368/20, Miley Cyrus / Cyrus et al., EU:T:2021:372)>>
Conclusione:
<< 135 According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).
136 A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered.
Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the signs, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier trade mark, the greater the risk of confusion, and trade marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than trade marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
137 Where a common element, retains an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services at issue come, at the very least, from companies which are linked economically, in which case a likelihood of confusion must be held to be established (22/10/2015, C‑20/14, BGW / BGW, EU:C:2015:714, § 40).
138 In numerous members states, family names are given more weight than first names, even if they are at the beginning (03/06/2015, T-559/13, Giovanni Galli, EU:T:2015:353, § 47). In the absence of any arguments or evidence submitted with this respect, the Board considers that the family name has no less importance than the first name in neither Bulgaria, Estonia, Croatia, Latvia nor Lithuania.
139 In light of the at least average degree of similarity between the goods and services, the average degree of similarity of the signs and the normal inherent distinctive character of the earlier trade mark, a likelihood of confusion exists in at least Bulgaria, Estonia, Croatia, Latvia and Lithuania. Despite the fact that the average consumer will display a high level of attention, even these consumers may believe that the EUTM applied for is a sub-brand of the earlier trade mark and that both belong to the same or economically-linked undertakings.
140 For the sake of completeness, the Board would like to add the following:
141 Even if Lewis Hamilton were a famous person in the entire European Union, it needs to be taken into consideration that the evidence in file suggests that he is often referred to by his family name. This is evident from the evidence submitted by the opponent in its response to the statement of grounds (page 27ss, page 6 351 of the file and Annex AN44.1), which proves that newspapers refer to him only as ‘Hamilton’. This does not mean anything else than that the relevant public will immediately associate ‘Hamilton’ with ‘Lewis Hamilton’. Even if ‘Lewis Hamilton’ enjoyed the status of a famous person, the term ‘Hamilton’ alone would also be associated with him, which would lead to the fact that the public could believe that the earlier trade mark is also
endorsed by the applicant, and leading therefore also to a likelihood of confusion since the public might believe, that both trade marks are coming from the same undertaking or belong to undertakings economically-connected.
142 The relevant facts in these proceedings are different from those in the proceedings which led to the judgments on which the applicant relies. Nothing in the file allowed the conclusion that the public would refer to Barbara Becker as Becker alone. The same holds true with respect to Miley Cyrus, who is only known as Miley Cyrus and not as Cyrus. Last, in the Messi case, the opposing trade mark was not Messi. Consequently, in these cases, the fame and repute of Barbara Becker, Miley Cyrus and Leo Messi could exceptionally rule out any likelihood of confusion>>
