In 2008, on the basis of its CTM and Benelux word trademark LEO registered in class 14 (diamonds, precious and semiprecious stones and jewellery; precious metals; horological and chronometric instruments; watches), MY DIAMONT PLACE LTD filed an opposition against the CTM application of Max Froehlich GmbH’s figurative marks
also aimed to cover products in class 14 (precious metals and their alloys and decorative items or works of art of precious metals or coated wherewith; jewellery; precious stones; horological and chronometric instruments).
The opposition had been rejected because the two signs, even if aimed to protect identical or similar goods, were visually similar only as far as they coincided in the word element LEO, which indicates either an astrological constellation (in English and Spanish) or a common male name (in many relevant countries).
According to the Opposition Division, LEO is recognized more as name than as a constellation in both trademarks, therefore a conceptual comparison had no influence on the judgment on similarity. The distinctiveness of LEO was considered to be normal.
The special arrangement of the word elements in the contested trademark LEO MARCO suggested in particular to Spanish and Italian consumers that the trademark was made up of a name and a surname: MARCO added distinctiveness to the trademark also because family names have in general a higher distinctive value than first names.
On 9 December 2010, the Board of Appeal upheld the decision, adding some observations: if it true that common first names may functions as trademarks, consumers will assume that all the goods sold under that first name in conjunction with another name come from the same enterprise only in the case in which the first name has a reputation.
To the question if LEO retains an independent distinctive role when incorporated into a figurative mark also containing MARCO, the Board stated that if LEO is used as a trademark on its own “consumers are not likely to assume that the combination of LEO with an additional name refers to the same commercial origin (..), they work on the assumption that the business will behave rationally. They would not expect a jeweler that sell his wares under the short and simple name LEO, to blur his commercial identity by simultaneously using longer, more complex names such as LeoMARCO, LeoGIACOMO or LeoJONES". Then the answer is no.
The Board further observed that, since the goods at issue are normally sold neither on the phone nor in crowded noisy places, their public will see and perceive their trademarks in first place visually and visual differences acquire greater importance. Moreover, jewellery, precious stones and (many kind of) watches can be considered in most of the cases as luxury goods or gifts, therefore a high level of attention of the public is expected, and likehood of confusion is reduced.