NEWS

Scope of protection of a figurative trademark in the fashion industry

Judgment of EGC 20.12.2023, T-564/2 – “Lion’s head”

 Contents

No likelihood of confusion between Lion and Lion

A Polish company is owner of earlier figurative trademarkfor all goods in classes 14 and 25. The applicant filed EU trademark applicationfor goods in classes 14 (jewellery) and 25 (including gowns; dinner suits; furs’).
 
The Polish company filed an opposition which was upheld by EUIPO and the Board of appeal. EGC annulled the decision and denied likelihood of confusion.

Identical goods

The goods in question are identical. There have been no questions of legally valid use of the earlier trademark so that the goods as registered were relevant.

Relevant public’s level of attention depend on particular goods

A high level of attention reduces the risk of likelihood of confusion. As far as expensive luxury goods are concerned the level of attention of the consumers is high and for other goods only average. Therefore the level of attention varies from average to high.

The earlier mark’s lion head has a low degree of distinctiveness.

The degree of distinctiveness influences the risk of likelihood of confusion too. If the distinctiveness of the earlier trademark is high also the risk of likelihood of confusion is higher. Contrary to EUIPO the EGC decided that the sign has got only small distinctiveness.

EUIPO and Board of Appeal considered that the lion’s head of the earlier trademark is of normal distinctiveness because the sign has got no meaning with respect to the relevant goods. In contrary thereto the EGC argued that the sign is only small distinctive.

Images of lion’s heads are often used in the fashion industry and are perceived only as decorative element. This applies also to images of other wild animals. Therefore the distinctiveness of the earlier trademark is small.

Although the goods in question are identical and the signs are similar the EGC decided that there is no likelihood of confusion between the mutual trademarks.

To the point

The distinctiveness of signs which show images of animals may be small. The assessment of the distinctiveness of signs depends on the registered goods and services. The habits of various industries influence how the consumers face trademarks. The selection of the image of a sign matters the scope of protection of a trademark.

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Karin Simon
Lawyer
Certified IP Lawyer

Susanne Graeser
Lawyer
Certified IP Lawyer

Uhlandstr. 2
80336 Munich
Germany

Phone +49 89 90 42 27 51-0
Fax +49 89 90 42 27 51-9

Karin Simon
Rechtsanwältin

Fachanwältin für
gewerblichen Rechtsschutz

Susanne Graeser
Rechtsanwältin

Fachanwältin für
gewerblichen Rechtsschutz

Uhlandstr. 2
D-80336 München

Tel. +49 89 90 42 27 51-0
Fax +49 89 90 42 27 51-9