<< The General Court held, in particular, that, where the earlier marks relied on in the opposition were national certification marks, which had been registered under national legislation transposing Directive 89/104, the likelihood of confusion had to be understood – by analogy with the rules governing collective marks – as being the risk that the public might believe that the goods or services covered by those earlier trade marks and those covered by the trade mark applied for all originated from persons authorised by the proprietor of those earlier marks to use them or, where appropriate, from undertakings economically linked to those persons or to that proprietor. It added that, furthermore, although, in the event of opposition by the proprietor of a certification mark, the essential function of that type of mark had to be taken into account in order to understand what was meant by likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, the fact remained that the case-law establishing the criteria with regard to which the existence of such a likelihood of confusion had to be assessed in practice was applicable to cases concerning an earlier certification mark>>.
marchio posteriore for classes 5, 35 and 44, namely “pharmaceuticals”, “medical preparations”, “food supplements” and “dietetic substances for babies (colori rivendicati)marchio anteriore designating, inter alia, classes 5, 30 and 32, “ia” designating goods in class 10 and “ia” designating services in class 35.
<<Overall assessment of the likelihood of confusion
36 The enhanced distinctiveness of the earlier mark was not claimed. Its inherent
distinctiveness results from the distinctive element ‘iaʼ in the central and initial position
but is weakened by the fact that its second word ‘BABYʼ is descriptive. The last word
‘interapothekʼ cannot be seen as a meaningful expression: as explained before, even if its
part ‘apothekʼ can be related to ‘Apothekeʼ (German word for ‘pharmacyʼ) the
combination with the prefix ‘interʼ lacks any tangible sense and is not descriptive. The
element may be seen as allusive but still distinctive. Overall, the inherent distinctiveness
of the earlier mark is under average.
37 The level of attention of both, the professional and the general public is high. The mark
has been found aurally similar to an average degree but conceptually and visually only to
a low degree. For the relevant goods and services the visual aspect is not less important
than the aural one, because the goods are bought on sight and the services are often
contracted on basis of written descriptions (offers, catalogues, Internet searches).
Therefore, taking into consideration the high level of attention of the relevant public and
the weakened distinctiveness of the earlier mark, the likelihood of confusion cannot be
confirmed even for identical goods. Even less so can this likelihood exist for goods that
are only similar.
38 The other earlier marks invoked in the opposition are even less similar to the EUTM
application as they overlap with the latter in only two letters, but differ in a multitude of
factors (beginning, length, font of the letter ‘aʼ, colours, initial letter/sound, number of
syllables). The likelihood of confusion does not exist on the basis of these marks either.>>
App. Milano 3057 / 2’023 del 30.10.2023, rg 2355/2021.rel. Cortelloni, Sergio Ricci spa c. Sergio Rossi spa:
<<La Corte rileva che una “famiglia di marchi”, per essere tale, presuppone un “marchio capostipite” e altri marchi che riproducono lo stesso nucleo fondamentale, identificativo ed evocativo di determinati prodotti, con eventuali mere varianti grafiche, che, peraltro, devono apparire accessorie e marginali rispetto al nucleo fondamentale considerato.
Nel caso in esame, i segni di Stefano Ricci spa oggetto di disamina, come detto, sono i seguenti: …
Orbene, con riferimento a tali segni, sembra a questa Corte che la possibilità di ravvisare in essi un “nucleo fondamentale comune” incontri un forte ostacolo nel fatto che l’utilizzo delle lettere “SR” avviene – in ciascuno dei marchi considerati – con modalità del tutto particolari e differenti: talvolta, mediante l’impiego di forme “classicheggianti” (1); altre, con l’ulteriore inserimento di una cornice geometrica e decorata, a forma ottagonale, dentro la quale le lettere sono inserite su sfondo bianco (2); ancora, mediante l’utilizzo di decori intrecciati tali da rendere meno riconoscibili ed evidenti le lettere e da evidenziare maggiormente l’aspetto decorativo (3); in un altro caso, mediante l’utilizzo delle lettere con modalità non intrecciate e distanti fra loro, in “stampatello” maiuscolo e aventi fondo bianco /sfumato (4); infine, utilizzando forme moderne e quasi geometriche ove, ancora una volta, il richiamo alle lettere “SR” appare molto meno evidente e riconoscibile (5).
Pertanto, in assenza di un “nucleo fondamentale comune” – che non si ripete in modo costante ed evidente – non sembra possibile ravvisarsi, in concreto, l’esistenza di una “famiglia di marchi”, nel senso auspicato da parte appellante>>
Eric Goldman dà notizia di NORTHERN DISTRICT Court OF ILLINOIS
EASTERN DIVISION 29 settembre 2023, No. 22-cv-2378, Emoji company v. vari soggetti .
La convenuta aveva usato il marchio denominativo (la parola) “Emoji” nel descrivere i propri prdotti, dato che vendeva stickers che ricordavano la forma di emojis.
Si tratta di fair use secondo il diritto dei marchi usa (da noi art. 21 c.1 c.p.i., xa vedere se lettere b) o c)), dice la corte.
Là è l’argt. 15 US Core § 1115.b. (4): << That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin;>> (la Corte non menziona la fattispecie sub (4), ma altre paiono non adatte)
Interessante è anche la questione della volgarizzazione del segno.
La corte dice che, impregiudicato se lo sia per digital icons, non lo è per altri prodottio come gli stickers fisici sub iudice: <<But those facts do not strip Emoji Company of trademark protection for the term “emoji”
on classes of products other than digital icons, such as, as relevant here, stickers. That’s because
“emoji” is not a generic term for stickers or emoji-themed stickers. See McCarthy, supra at 12:1
(stating that when a name is generic, “the name of the product answers the question ‘What are
you?’”); see also H.D. Michigan, Inc., 496 F.3d at 760 (“A company’s name may be generic as to
one of its products, but not generic as to its other products, even those related to the first
product. Two Second Circuit decisions illustrate this principle. In one, the court . . . held that the
word ‘safari’ is generic as applied to a type of khaki hat and jacket, but not generic as applied to
boots, shoes, shirts, ice chests, and tobacco. See Abercrombie & Fitch Co. v. Hunting World Inc.,
537 F.2d 4, 11-12 (2d Cir. 1976). In another, the court held that the word ‘self-realization’ is a
generic name for a yoga organization (people performing yoga attempt to attain self-realization),
but descriptive as applied to yoga books and classes. See Self–Realization Fellowship Church v.
Ananda Church of Self–Realization, 59 F.3d 902, 909-10 (9th Cir. 1995).”). Thus, Winlyn has not
shown that Emoji Company has a less-than-likely shot at success on the merits on the basis that its
mark is generic and therefore unprotectable>>.
Questa la pubblicità della covnenuta (su Amazon; immagine rpesa dal blog di Eric Goldman):
Ne dà notizia Marcel Pemsel in IPKat ove anche una riproduzione della mascherina (assente nel documento con le Conclusioni):
Per l’ AG, non si impinge nella privativa.
La risposta è condivisibile.
Successivamente l’AG si occupa del caso in cui la Corte non lo segua. Dice che allora non si può applicare la limitazione posta dall’art. 14.1.c) del reg. 2017/1001, per cui <<Il diritto conferito dal marchio UE non consente al titolare di impedire ai terzi l’uso in commercio: (…) c) del marchio UE per identificare o fare riferimento a prodotti o servizi come prodotti o servizi del titolare di tale marchio, specie se l’uso di tale marchio è necessario per contraddistinguere la destinazione di un prodotto o servizio, in particolare come accessori o pezzi di ricambio>>.
Letteralmente non è applicabile, è vero. La questione è intricata : una risposta affermativa non mi parrebbe a prima vista impossibile, anche se meriterebbe analisi approfondita
Il secondo non è vero che sia dissimilar dal primo: è similar, anche se solo in parte.
Si noti l’evidente tentatico del secondo di porre una netta differenza nel nome, la cui rilevanza è duplicemente notevole all’interno di ciascun marchio: sia perchè il nome prevale sul disegno nella percezione cnsumeristica (lo stesso BoA lo ricorda) sia perchè è scritto assai ingrande nel caso specifico.
Quindi il rigetto dell’opposizione era ingiustificato e la procedura torna alla Opposition Division per vedere se ciò basta per un giudizio di confondibilità (essenzialmente data la rinomanza dell’anteriorità: <<It must be borne in mind, in particular, that, depending on the degree of recognition of the earlier trade mark, even a low degree of similarity between the signs may be sufficientfor the assumption of a link within the meaning of Article 8(5) EUTMR>>, § 25)
Così il 1 Board of appeal dell’ EUipo 20 giuigno 2023In Case R 1952/2022-1Mast-Jägermeister SE c. Tin Kakuszi (ungheria) (v pag. web euipo e accouint del fascicolo nel database ove trovi trad. automat. dall’ioriginale tedesco)
<<18. The earlier figurative mark likewise consists of a rectangular shape which resembles a-bottle label. On a dark-green background there is a white rectangle bordered by a green line followed by a white line. There is a horizontal banderolein orange in the middle of the Zei chens, which contains the text ‘Jägermeister’ in black stylised letters. Underneath it is the word element ‘SELECTED 56 BOTANICALS’ in considerably smaller lettering together with further details, which are barely legible on account of their even smaller font. Above the orange stripred is a white and golden green circle which is decorated with golden-coloured leaves on its underside. The stylised head of a stag with antlers in a jet-circle is depicted in the green circle. Above and framed by the anchor is a circle in a lighter green with a white Latin cross. For the above reasons, the most distinctive element of the earlier sign is the word element ‘Jägermeister’. Nevertheless, the brown targeted will not-neglect the graphic design as a whole and in particular the representation of a stag’s head on a green circle with a cross and the green and orange colour schema in the overall impression of the earlier trade mark.
19. Despite the differences that exist, in particular the differences in the most distinctive word components ‘ST. Joseph’ and ‘Jägermeister’ and in terms of the figurative elements (head of a man in contrast to the head of a deer), the opposing signs have a low degree of visual similarity, as theirgraphic arrangement is very similar overall. The signs are identical in terms of their colour schema (green, white, gold and orange/red), their basic rectangular shape, their construction and their essential graphic elements and their arrangement to one another (circular green element with a portraitsimilar strip above an orange-coloured/red banderole).
20. Both the earlier sign and the central left-hand part of the sign applied for consist of an inner (dark) white rectangle which is firstly bordered by a green, then a dark-green white line and then a dark green line. Both signs contain a red or orange band positioned in the centre with a black lettering above which a dark-and-white and golden green circle with a gold floral decoration is attached. In the dark green circle, there is in each case a stylised front view of a head (by a man in the contested sign and a stag in the earlier sign), which is surrounded by a jet circle in each case.
21. The signs under comparison therefore have a low degree of visual similarity.
22. The signs are aurally dissimilar, as the most distinctive word elements ‘ST. Joseph’ of the contested sign and ‘Jägermeister’ of the earlier sign un are pronounced differently-depending onthe different relevant languages.
23. The signs are conceptually dissimilar. Some of the consumers will understand the word element ‘ST. Joseph’ of the contested sign as a reference to the naked Josef. The word-element ‘Jägermeister’ of the earlier sign as a whole has no meaning. Nevertheless, the German-speaking consumer in any case immediately recognises therein thefact that the terms ‘Jäger’ and ‘Meister’ are combined, and therefore a meaning that differs from ‘ST. Joseph’. Furthermore, for all the consumers targeted, the signs differ in the meaning of the respective figurative elements, namely the depiction of a head of a man in the application, in contrast to the depiction of a head of a deer in the earlier trade mark.
24. Overall, the signs under comparison therefore have a low degree of similarity.
25. The Opposition Division considered the signs to be dissimilar and therefore, from their point of view, did not examine the further requirements ofthe asserted opposition. However, since, as stated above, the signs have a low degree of visual similarity, this must be remedied. It must be borne in mind, in particular, that, depending on the degree of recognition of the earlier trade mark, even a low degree of similarity between the signs may be sufficientfor the assumption of a link within the meaning of Article 8(5) EUTMR (-16/01/2018, 398/16, COFFEE ROCKS (fig.)/STARBUCKS COFFEE (fig.) et al., EU:T:2018:4, § 78)>>.
Il trib. conerma che non c’è rischio di confuisione
<<69 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
70 In the present case, the Board of Appeal concluded that, in the light of the identity of the goods at issue, the average degree of inherent distinctiveness of the earlier mark, the below-average degree of visual similarity and the average degree of phonetic similarity of the signs at issue as well as the finding that the conceptual comparison remained neutral or that there were no relevant conceptual differences that could help to distinguish between the signs at issue, there was a likelihood of confusion on the part of the Spanish-speaking public which did not understand English, the level of attention of which was average.
71 In that regard, first, the applicant submits that the earlier mark is not essentially perceived as the word mark ‘true’, but that it is the figurative representation of that mark which makes it distinctive because, if that were not the case, that mark could not have been registered on account of the descriptiveness of the term ‘true’ for the English-speaking public. However, it must be pointed out that that argument is similar to that set out in paragraph 46 above and must therefore, for the reasons already stated in that paragraph, be rejected.
72 Secondly, as regards the conceptual comparison, which the Board of Appeal incorrectly found to be neutral, whereas the signs at issue are conceptually different, it must be held that that error of assessment does not have any consequences in the context of the analysis of the likelihood of confusion. As the Board of Appeal pointed out and as the Court has held in paragraph 67 above, the concept is conveyed by one of the two word elements in the mark applied for, namely the element ‘skin’, which is understood as referring to the skin and which is, at best, weakly distinctive with regard to the goods at issue, with the result that the conceptual dissimilarity cannot counteract the overall similarity between the signs at issue.
73 Consequently, in spite of the error of assessment which was made as regards the conceptual comparison of the signs at issue and although there are certain differences between those signs, it must be held that, following a global assessment, the Board of Appeal was right in finding that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the part of the relevant public>>.
Ma i consueti sei fattori per la confondibiità portano la corte a rigettare la domanda, nonsotante l’ulteriore elemento del public interest giocasse a favore dell’attore.
(segnalazione e link dal blog del prof. Eric Goldman)
La divisione di opposizione dell’EUIPO decide l’opposizione N° B 3 172 678 in data 8 agosto 2023 (qui la pagina del fascicolo e qui link diretto al testo) relativa al confronto tra marchi figurativi.
L’opposizione è parzialmnente (sotto il profilo merceologico) accolta.
<< e) Global assessment, other arguments and conclusion
Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods/services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods/services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings.
The Opposition Division has assumed in section d) of this decision that the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier marks have an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
The goods and services are assumed to be identical or similar to a high degree and they target the general and professional publics. The degree of attention varies from average to high.
The similarities between the signs arise from the depiction of a bird in all the signs, which leads to a low degree of visual similarity and at least an average degree of conceptual similarity (if not identity), while the signs are aurally not comparable, as concluded above. However, the signs differ considerably in the particular ways the common elements are depicted, such as their orientations and different shapes of wings, different circular and/or semi-circular shapes and, in particular, the additional verbal elements of the contested sign, which have no counterparts in the earlier marks. The aforesaid differences are particularly relevant when assessing the likelihood of confusion and all these differences will lead to a rather distinct overall impression created by the signs. Even though both parties have used the same concept of a silhouette of a bird in their signs, this itself is not sufficient to give rise to a likelihood of confusion or association, since the differentiating elements are clearly perceivable and sufficiently outweigh the similarities of a depiction of a figurative bird.
The opponent cannot rely on the protection of the depiction of a type of animal, or its part, per se. In the case of two purely figurative signs (or, by analogy a purely figurative sign versus a figurative sign containing a figurative component, as in the present case), which depict a certain type of animal, or a part of it, the owner of an earlier mark can only preclude registration of a contested sign if the figurative depiction itself shows significant similarities to the latter sign (18/04/2018, R 1547/2017-2, DEVICE OF A BLACK BIRD (fig.) / RABE et al., § 35; 28/05/2009, R 1841/2007-1, Form eines Mammuts / ELEPHANT WORLD-TOURS et al., (fig.), § 56). However, the similarities of the figurative elements in the present case are not considered significant, while important differences between the signs are introduced by the verbal elements of the contested sign, as mentioned above, which have the strongest impact in that sign.
Consequently, in the Opposition Division’s point of view, even if there is a conceptual link between the signs, on account of the coinciding concept conveyed by the figurative element of a silhouette of a bird, the considerable visual differences between the signs, as described above, are sufficient to prevent any likelihood of confusion, especially bearing in mind that the relevant public displays an average to high level of attention. Consequently, the fact that the signs contain a depiction of a silhouette of a bird is not sufficient in itself to lead to a finding of likelihood of confusion. The Opposition Division considers that the consumers will be able to safely distinguish between the signs.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.
The opponent has also based its opposition on the following earlier trade mark:
international trade mark registration designating the European Union No 1 457 089 (figurative mark).
This earlier mark invoked by the opponent is less similar to the contested mark. This is because it contains additional figurative components, namely a circle and some figurative lines, which overall give an impression of a simplified depiction of the Sun. These additional elements further differentiate between the signs visually and they also introduce an additional differing concept, which is not present in the earlier trade marks compared above. Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods>>.
C’è pure un interessante esame dell’opposizione basata sulla rinomanza, p. 10 ss , anche essa accolta parzialmente.
Si sta diffondendo la prassi di cercare di sfruttare la notorietà altrui rovesciando la direzione di un’immagine rinomata (e qui pure aggiungendovi un nome): tentativo per ora rischioso .
Le differenze però sono qui maggiori: spt. direi nel primo il felino sta saltando, mentre nel secondo sta correndo e poi i colori sono invertiti.
<<In making the visual comparison of two marks depicting an animal, the Opposition Division must take care not to apportion excessive weight to a coincidence in features that are merely generic to this part of the animal body (e.g. legs, tails), since these traits, which are common to felines, differ significantly in the details of the marks under comparison (13/07/2017, R 110/2017 2, DEVICE OF A FLYING BIRD (fig.) / DEVICE OF A FLYING BIRD (fig.) et al., § 61; 29/07/2020, R 2901/2019 5, DEVICE OF A SHEEP (fig.) / DEVICE OF A RAM (fig.), § 30). Indeed, these two depictions of a feline show some significant differences. This is caused predominantly by the fact that the depiction of a feline in the contested sign is very simplified and the morphologic features of felines are not clearly, immediately and effortlessly visible. Instead, that sign consists merely of a feline’s contour and requires some mental effort in order to recognise and identify a feline. This contrasts sharply with the depiction of a feline in the earlier mark, which is less streamlined and more detailed/elaborate, and contains more clearly identifiable morphologic features of a feline than the contested sign, such as details of its head, ears, eyes, etc.
In this regard, consumers are capable of perceiving differences between the stylisation of signs. The key point is how the signs at issue are normally perceived overall and not how the stylistic differences between them may be perceived in the event that a particularly meticulous consumer is in a position to examine the graphic stylisation and draw comparisons between them (20/07/2017, T 521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 49)>>
La risposta è di dubbia esattezza: il consumatore ricorda ad un livello di astrattezza maggiore , almeno per i beni di largo consumo
(anche qui segnalazione di Marcel Pemsel su IPKat che correttamente solleva il problema del grado di astratezza con cui ricorda il consumatore)
