Duck fight : when reputation comes to the rescue of the ‘risk of confusion’ assessment

This article first appeared on WTR Daily, part of World Trademark Review, in October 2022. For further information, please go to www.worldtrademarkreview.com. »

03 October 2022

EUROPEAN UNION

Legal updates: case law analysis and intelligence

Where a sign consists of both figurative and verbal elements, it does not automatically follow that the verbal element will always be regarded as dominant.

Due to the reputation of the earlier mark and the similarities between the signs, there would be a transfer of image of the prior trademark

The General Court confirmed that the opposition was well founded

On 14 September 2022 the General Court issued its decision in Itinerant Show Room v European Union Intellectual Property Office (EUIPO) (Case T-416/21), in a dispute involving two figurative marks including the representation of a duck.

Background

Itinerant Show Room Srl (‘the applicant’) filed the trademark depicted below in Classes 18 and 25:

Save The Duck SpA (‘the opponent’) lodged an opposition on the basis of the trademark depicted below in the same two classes:

The Opposition Division of the EUIPO rejected the presence of a risk of confusion, considering that there were insufficients imilarities between the signs. The opponent appealed and the Board of Appeal of the EUIPO overturned the decision; the board recognised the existence of a risk of confusion, in particular on the basis of the reputation of the prior trademark in Italy for down jackets. The applicant appealed against this decision.

General Court decision

The appeal was based on two main pleas.

The applicant first contested the admissibility of the evidence provided by the opponent for the first time before the Board of Appeal. The court recalled that evidence can be produced for the first time before the Board of Appeal if (1) it is relevant for the ,outcome of the case; and (2) it was not previously submitted for valid reasons, in particular where it completes elements that had already been submitted in good time. In the present matter, the court confirmed that the opponent had fulfilled the secriteria and that the evidence was therefore admissible.

Second, concerning the reputation of the earlier trademark, the court pointed out that, to benefit from the extended protection granted to well-known trademarks, the following conditions must be fulfilled: (1) the earlier trademark must be well-known; (2)the conflicting signs must be similar or identical; (3) the earlier trademark must have a reputation in the European Union; and (4)there must be a risk that a benefit may be unduly derived from the distinctive character or repute of the earlier mark. These conditions are cumulative.

Concerning the first condition, contrary to what was invoked by the applicant, the court confirmed that the elements of evidence provided by the opponent demonstrated the reputation of the earlier trademark in Italy.

Regarding the similarities between the signs, the court pointed out that it was necessary to carry out a comparison of the global impression created by the two trademarks. Further, when faced with a complex sign containing verbal and figurative elements,the verbal element is not always automatically considered as dominant. In the present case, the court confirmed that the verbal term ‘itinerant’ within the contested sign was not sufficient to divert the public’s attention from the dominant figurative element(ie, the duck).

The comparison thus had to be made between the two dominant elements. The court considered that the conceptual similarity between the signs – which both conveyed the same concept of a duck – was sufficient to recognise the presence of a risk of confusion. The differences were difficult to perceive and therefore negligible.

Concerning the last condition, the court highlighted that, in order to recognise that a trademark has unduly benefited from aprior trademark, it is necessary to take into consideration the advantage derived through use of the contested trademark without just cause. In the present matter, due to the reputation of the earlier trademark and the similarities between the signs, it was inevitable that there would be a transfer of image of the prior trademark, which the contested sign would benefit from.Moreover, the applicant had not provided any just ground on which the use of the contested mark was based.

The court thus rejected the appeal and registration of the contested sign was refused.

Comment

The decision is particularly interesting in relation to the comparison of complex signs, as verbal elements are traditionally considered to be dominant – contrary to what was (rightfully) found by the court in the present case. However, one may question the court’s position that the differences between the two ducks were negligible, and it will be interesting to see whether the decision will be maintained in case of an appeal before the Court of Justice of the European Union.

 

Mélanie Villanova and Marianna Kull Inlex IP Expertise