Background

At first instance, the Opposition Division rejected the opposition entirely and the Board of Appeal rejected Armani’s appeal based on the marks being dissimilar, irrespective of the level of attention of the relevant public, so there was no need to take into account reputation. In those circumstances, it considered that the applicant’s arguments concerning the identity or similarity of the goods at issue and existence of a likelihood of confusion were ineffective. were. According to the Board of Appeal, since the identity or similarity of the marks at issue was one of the cumulative conditions for the application of Article 8(1)(b) and Article 8(5), those provisions did not apply.

Armani appealed to the General Court which upheld the appeal and annulled the Board of Appeal decision.

The General Court’s decision

The Board of Appeal found, in essence, that the earlier mark was a purely figurative sign representing a stylised eagle with its wings spread and its head turned to the right, characterised by fairly thick horizontal bands, with a diagonal lateral cut. The mark applied for was also purely figurative, characterised by thinner horizontal lines, well-spaced from each other, with rounded ends, and representing the capital letter “V” or “Y”, as suggested by the presence of a lower horizontal line longer than the previous ones.

Armani claimed that, visually, the marks at issue have at least an average level of similarity. Indeed, they would both form a V, which would evoke a stylised bird and would be designed to convey the same message of harmony, symmetry and elegance.

The European Union Intellectual Property Office (EUIPO) disputed Armani’s claims and claimed that the marks at issue were comparable to short signs, in respect of which even slight differences could produce a different overall impression. It stated that the allusion to an eagle in flight in the earlier mark was absent from the mark applied for. On the other hand, it was undoubtedly reminiscent of the capital letter “Y”. Lastly, Armani’s assessment of the similarities between the marks was highly subjective, in particular when it referred to concepts that are difficult to define objectively, such as the “sober and minimalist” style, or when it interpreted the V-shape as constituting a reminder of the image of a bird.

It was noted that the marks at issue were both composed of the same number of horizontal black stripes on a white background and have a V-shape. While it was true that those characteristics were represented in a somewhat different manner in each of the two marks, those differences were considered to be minimal and unable to lead to a different overall visual impression, contrary to what the Board of Appeal found.

The marks would both be perceived and memorised as a V-shape, of comparable thickness, emerging from the horizontal black lines juxtaposed on a white background. The fact that consumers retained in their memory an image of the signs that is only imperfect, reinforced the finding of a rather low visual similarity between the signs.

In those circumstances where there is at least partial equality between the marks as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects, the General Court concluded that the Board of Appeal erred in failing to carry out a global assessment of the likelihood of confusion, as a result of its erroneous finding of an overall difference between the marks at issue and the “inapplicability” of Article 8(1)(b), a finding based, on the “very different” overall impression that consumers would have visually.

As the Board of Appeal had erred in its assessment of the likelihood of confusion of the marks (having found the marks to be dissimilar), thereby also ruling out an assessment under Article 8(5), the contested decision was annulled without analysing the other relevant conditions.

In short

This case demonstrates how subjective an analysis of similarity can be and therefore to assess likelihood of success in opposition proceedings, particularly in relation to logo only marks. Caution should be paid when comparing two visual only marks and finding that they share no visual similarity at all.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: Giorgio Armani SpA v Shenzhen City Chongzheng Technology Co Ltd
Date: 27 November 2024
Citation: T-509/23
Decision: dycip.com/t-2024-870