Judgement of the Court (Seventh Chamber) of 18 September 2014 (Società Italiana Calzature SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). Joined cases C-308/13 P and C-309/13 P.
On 13 September 2007 VICINI applied for the registration of the following figurative word sign as a community trade mark with the OHIM:
The goods for which registration was sought are those included in Classes 18 and 25 (Nice) and correspond to the following description:
– Class 18: “Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery”.
– Class 25: “Clothing, footwear, headgear”.
Società Italiana Calzature SpA (“Calzature”) filed a notice of opposition to the registration of the VICINI figurative mark for products included in Class 18 and 25. The opposition was based on the following previous rights:
| a. |
The so called community trade mark ZANOTTI, applied for on 30th April 1996 and registered on 24th November 1998, that differentiates products in class 25 (Nice) with the following description: “Clothing, footwear, headgear”.
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| b. | The figurative Italian trade mark, applied for on 28th May 1985 and registered on 20th October 1986, that differentiates products comprised under Class 18 (Nice) (“mainly leather, leather imitations, travel goods not included in other classes and saddlery) and Class 25 (“Footwear and clothing in general, for men, women, children, also including sportswear”), as follows: |
On 14th March 2005 VICINI applied for the registration of the following figurative word sign as a community trade mark with the OHIM:
Registration was sought for the goods included in Classes 18 and 25 of the Nice Classification (described above).
Calzature opposed to the registration of the mentioned figurative word sign based on the previous community trade mark that differentiates those products in Class 25 corresponding to the following description: “Clothing, footwear, headgear”.
The Second Chamber of appeal of the OHIM totally rejected the oppositions filed against the VICINI trademark application, considering that there was no likelihood of confusion between the trade marks in conflict. Particularly, that the mentioned trade marks are not comparable from a visual and/or phonetic profile point of view, despite a certain similarity of their conceptual profile due to the fact that the mentioned marks contain the “Zanotti” surname.
It was also considered that the graphic element of the trade marks applied for, representing a handwritten signature, was dominant and that the term “zanotti” appearing in each of the marks under dispute has no independent distinctive role in the requested trade marks. The conclusion was reached that the differences between the marks in conflict were sufficient to exclude the likelihood of confusion for the Italian public as regards the case of the Italian figurative word sign requested on 28th May 1985 and registered on 20th October 1986, and for the public of the European Union as regards the previous community trade mark, and also with relation to identical products.
In its judgment rejecting the request from Calzature the General Court concluded that the assessment of the similarity between two signs cannot be limited to taking into consideration just one part of a “mixed” sign (one that includes both figurative and written elements), and comparing this to another sign. Instead, a confrontation must be made to examine the signs in question in their complexity, which does not exclude the fact that the overall impression produced in the public’s memory with reference to a “mixed” sign may, in certain circumstances, be dominated by one or more elements of its components.
The cassation judgment accepts the grounds of the General Court that the existence of a likelihood of confusion in the public’s mind needs to be addressed overall, taking into consideration all the relevant aspects of the case.
The figurative elements of the requested trade marks were visually dominant and would be noticed immediately by the consumer due to their size, and stylish forms, and as they were placed on the wording elements. It is precisely the positioning and the dimension of an element which makes it considered to be dominant from the overall impression produced by a “mixed” sign. The wording elements of the requested trade marks were represented by smaller characters than the figurative elements and should be considered secondary. The wording elements, even if they are not completely insignificant, were still secondary in the overall impression produced by the requested trade marks. Lastly, in its judgment the Court pointed out that there is no standard according to which the wording element of a “mixed” sign is systematically more distinctive and dominant than a figurative element.