Legal Updates

Trade Mark Law – Opposition of Community Trade Mark - Likelihood of Confusion

In the case of Giordano Enterprises Lrd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2010] (T-483/08), the Court of the European Union  held that the  trade mark GIORDANO was confusingly similar to the Portuguese registered trade mark GIORDANO in respect of footwear in Class 25.

The applicant filed a Community Trade Mark application (CTM) In September 2000, with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for the name GIORDANO in respect of clothing and headgear in classes 18 and 25.

A notice of opposition was filed by Jose Dias Magalhaes & Filhos Ida (Jose Dias) against the entire class of goods on the basis that there was a likelihood of confusion between this trade mark and the earlier Portuguese trade mark No 322534 which was registered in June 1997 for the name GIORDANO in respect of footwear in Class 25 and that all the goods in the application were covered by its Portuguese registration.

 The Board decided that there was a likelihood of confusion in Portugal and upheld the opposition in so far as the goods applied for were made of leather and imitations of leather (in Class 18) such as bags, clothing, footwear and headgear in Class 25. The opposition was dismissed in relation to the trade mark application for goods that were held to be dissimilar to footwear such as leather, imitations of leather, animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks.

 Jose Dias appealed.

OHIM (the Second Board of Appeal) upheld the appeal in part. The application was allowed to proceed to registration in respect of holdall, suit carriers, briefcases, portfolios and wallets.

Jose Dias appealed to the Court of the European Union on the basis that:-

• infringement of art 8(1)(b) of the Regulation; and
• infringement of art 42(3) of the Regulation along with Rule 15(2)(c) of Commission Regulation (EC) 2868/95 as the Board of Appeal had made a decision outside the scope of the opposition proceedings.

The Court held:

• ‘Under art 8(1)(b) of the Regulation, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for was not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there existed a likelihood of confusion on the part of the public in the territory in which the earlier trade mark was protected. According to settled case-law, the likelihood of confusion on the part of the public, defined as the risk that the public might believe that the goods or services in question came from the same undertaking or, as the case might be, from economically-linked undertakings, had to be assessed globally, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods services. ‘
• In the instant case, the two marks were identical, increasing the likelihood that consumers were likely to perceive the goods marketed under the trade marks in question as coming from the same source. In assessing the overall likelihood of confusion (the goods covered by the two trade marks were similar only to a certain degree) the Court decided that the relatively limited level of similarity was offset by the fact that the two trade marks in question were themselves identical.
• Therefore, the Board of Appeal was right to rule that a likelihood of confusion existed between the earlier Portuguese trade mark, registered in respect of footwear in Class 25, and the CTM application in respect of clothing and headgear in Class 25 and also in respect of the goods in Class 18 (it had refused registration for).
• In the circumstances, the Board of Appeal was within its jurisdiction and had not ruled on a matter outside the scope of the opposition proceedings nor had it infringed art 42(3) of the Regulation or Rule 15(2)(c) of Regulation 2868/95.

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© RT COOPERS, 2010. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.