In a recent decision the General Court of the European Union has upheld two decisions made by the Board of Appeal in relation to an opposition made to a figurative trade mark application containing the word "ricci". This opposition was based on two earlier trademarks for "RICCI" and "NINA RICCI".
The applicant, Arrom Conseil had applied for a figurative trade mark "ROMEO HAS A GUN BY ROMANO RICCI" in various classes: 3, 25 and 35. Please click here to see the applicant's trade mark (left) and the opponent's trade marks (right).
Two separate oppositions were lodged against the later application by French fashion and fragrance group 'Puig France SAS'. They are the owners of well-known brands such as Nina Ricci, Paco Rabanne, Jean Paul Gaultier.
Puig relied upon both their earlier European trade marks "RICCI" and "NINA RICCI". The foundation of their oppositions was that there was a likelihood of confusion with both earlier trade marks, pursuant to Article 8(1)(b) EUTMR. They also relied on the fact that the new application took unfair advantage of the earlier "NINA RICCI" registration pursuant to Article 8(5) EUTMR due to the reputation of the 'NINA RICCI' mark in the marketplace.
The oppositions were initially rejected by the Opposition Division of the EUIPO however Puig appealed to the Board of Appeal. The appeal was successful but Arrom Comseil subsequently appealed this decision to the General Court. The decision of the General Court on Puig's two grounds of opposition is set out below.
Likelihood of confusion (Article 8(1)(b) EUTMR)
The Court concluded that in respect of likelihood of confusion, the mark applied for and Puig's registered mark "RICCI" were similar to one another. The two marks were conceptually similar and English-speaking consumers would associate the two marks as being connected to each other. The Court said that there was a likelihood of confusion between the goods and services which were identical or similar to those of Puig's mark.
Unfair advantage (Article 8(5) EUTMR)
In relation to Puig's second ground of opposition, it relied on its registered mark "NINA RICCI" and placed a heavy onus on the fact that the mark enjoyed a good reputation in the fashion and perfume industry. The Court said that the terms "man with a gun" would not be appropriate or well-matched with the image promoted by the luxury brand NINA RICCI and so this would be likely to affect the reputation of the opponent's brand.
The case demonstrates a harsh stance towards the applicant whose mark only contained one mutual word, "ricci" with Puig's mark. The case also demonstrates how the Court will take into account the particular circumstances of the market for the goods or services applied for, in this instance the fashion industry and the importance of personal names and brands within it, when comparing marks. It means that those working in fashion who intend to apply for a trade mark using a popular name may face hurdles in doing so.Posted by: in: EU/International, News, Trade Marks