On 8 February 2019, the General Court annulled the decision of the European Intellectual Property Office (the "EUIPO") which had refused the registration of the figurative mark "Chiara Ferragni" as an EU trade mark (Case T-647/17).
In 2015, Serendipity Srl., a group of companies that includes fashion company Chiara Ferragni, filed an application with the EUIPO for the registration of a EU trade mark for goods in Classes 18 (bags, haversacks, duffel bags, animal skins, imitation leather, valises, leather purses, key cases and umbrellas) and 25 (clothing, shirts, sweaters, trousers, skirts, denim jeans, bathing suits, undershirts, tee-shirts, shorts, sportswear, lingerie, hats and footwear) of the Nice Classification. The sign looks as follows:
A Dutch company, CKL Holdings NV, filed a notice of opposition to the registration of that figurative mark, claiming that there was a likelihood of confusion with the mark 'Chiara', which had been registered in the Benelux only two weeks after publication of the Chiara Ferragni mark application, for Class 25 products. Consequently, in 2017, the EUIPO refused to register the newer sign as a EU trade mark.
Serendipity filed an appeal before the EUIPO Fourth Board of Appeal but was unsuccessful. The Board of Appeal found that the signs at issue had an 'average' degree of visual similarity, had an 'above average' degree of phonetic similarity and had a 'neutral' conceptual similarity. In addition, the Board of Appeal noted that the mark 'Chiara' possessed a 'normal' intrinsic distinctiveness. In conclusion, the Board of Appeal found a likelihood of confusion between the two signs with respect to the relevant products of Classes 18 and 25.
Serendipity then brought an action before the General Court, seeking the annulment of the EUIPO's decision on three main grounds: (i) they objected to the finding of a likelihood of confusion although the EU word mark 'Chiara Ferragni' had already been registered for the same classes as the contested figurative mark; (ii) the decision was wrong in its findings with respect to the visual, phonetic and conceptual similarities and (iii) the decision was wrong in the overall appreciation of the likelihood of confusion.
In its judgment, the General Court started by noting that the average consumer usually perceives a mark as a whole and does not go on to examine the different details involved. The figurative mark 'Chiara Ferragni' is a composite of both verbal and visual components. The mark is composed of the two words 'Chiara' and 'Ferragni', in black capital letters, with the letters 'i' in bold, and a figurative component positioned above those words and consisting of a drawing representing an eye of light blue colour with long black lashes. The applicants claimed those lashes looked like the letters 'i' in 'Chiara' and 'Ferragni'. In contrast, the initial 'Chiara' mark is made up of the single word 'Chiara'.
The General Court disagreed with the decision of the Board of Appeal that the wording component was more important than the figurative component. It noted that the highly stylised nature, colour, position and size of the mark are likely to divert the public's attention away from the word components which are placed in a lower position. According to the General Court, the figurative component of the mark applied for was at least as distinctive as the word components of the mark taken as a whole. The General Court also considered that the visual component of the eye had no relevance to the Class 18 and 25 products concerned and, therefore, could not be regarded as descriptive of those products.
The General Court then assessed the visual, phonetic and conceptual similarity of the marks.
The General Court first observed that the figurative component had a significant impact on the overall visual impression of the mark. The General Court then noted, first, that the mark applied for contained two verbal components, while the initial 'Chiara' mark only contained one and, second, that the longer component 'Ferragni' was visually more important than the shorter one 'Chiara'. In conclusion, the General Court only found a slight amount of visual similarity, notwithstanding the fact that the word component 'Chiara' of the initial mark is entirely reproduced in the mark applied for.
Phonetically, the General Court again attributed more importance to the longer, distinguishing component 'Ferragni' than to the shorter, similar component 'Chiara', even though the former was positioned after the latter. The General Court concluded that the two signs at issue had an 'average' or even 'slight' amount of phonetic similarity.
With respect to the issue of conceptual similarity, the General Court held that, although both marks refer to the female first name Chiara, the mark 'Chiara Ferragni" identified a specific person, while the initial 'Chiara' mark only consisted of a first name. Noting that Ferragni is not a common family name in the Benelux and that Chiara would be perceived as a common Italian first name by the general public, the General Court considered that 'Ferragni' would be remembered by the consumer as the more distinctive component of the two. According to the General Court, a consumer recognising the name Chiara as a first name will not associate the initial 'Chiara' mark as belonging to the same family of product designers, i.e., the Ferragni family. For those reasons, the General Court concluded that the brands involved could not be considered conceptually similar.
Concerning the overall likelihood of confusion, the General Court stated that, despite the fact that the goods concerned were identical or similar, the differences between the marks, especially the visual differences, ruled out any likelihood of confusion.
Accordingly, the General Court held that the Board of Appeal erred in confirming the original refusal on the grounds of a likelihood of confusion between the two marks, and annulled its decision.
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