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General Court: M&co. and Max&Co
In Case T‑272/13, the General Court had to review the following op
position:
|
Mackays Stores Ltd (UK) -contested CTM |
Max Mara Fashion
Group Srl (Italy)- earlier marks |
|
|
-earlier CTM and Italian mark:
MAX&CO. (earlier Italian mark) |
|
Class 25: ‘Articles of clothing;
headgear; footwear’; Class 35: ‘The bringing together, for
the benefit of others, of a variety of goods, enabling customers to
conveniently view and purchase clothing, headgear, footwear, haberdashery and
hair accessories, jewellery, watches and clocks, stationery, calendars and
diaries, hand bags, baggage, belts and accessories made of cloth, plastics or
leather or imitations of leather, household goods, household utensils and
containers, furniture, mirrors, bed clothing, linens and textiles, toys,
games and playthings, food and drink’.
|
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; bags and handbags; belts;
parasols, umbrellas, and walking sticks’; Class 24: ‘Textile and textile
goods, not included in other classes’; Class 25: ‘Clothing, footwear,
headgear, socks, gloves, ties, belts, sports clothing and for sports in
general, considered separately or in combination with each other, for women Class 35: ‘Advertising and
business’; Class 42: ‘Consultancy for the
setting up and management of retail sales outlets for fashion items and
clothing under franchise and/or using the trade mark as a sign, non-business’
|
The OHIM rejected the opposition finding there is no likelihood of confusion between the marks at issue. More specifically, the element common to both marks, namely, ‘&co.’ is not distinctive. Consequently, the signs at issue differ visually and phonetically, and they have a certain lack of similarity from a conceptual perspective. Finally, there is no likelihood of confusion between the marks at issue even assuming that the earlier marks have a highly distinctive character.
The Opponent appealed claiming that, on account of the highly
distinctive character of the earlier mark, all the elements of which it is
composed, including the element ‘&co.’, have a highly distinctive character.
It criticised the Board of Appeal for having artificially split the earlier
mark by finding that its enhanced distinctive character relates solely to the
element ‘max’ and not to the element ‘&co.’.
The General Court rejected the argument as irrelevant. The question
whether a mark has acquired an enhanced distinctive character through use and
the question whether that mark or the elements of which it is composed are
inherently distinctive are two different issues.
OHIM correctly observed that, where a
mark has a highly distinctive character, that distinctive character must be
ascribed to that mark as a whole and not to all the elements of which it is
composed, in particular to those elements which are inherently weak, as is the
case with the element ‘&co.’ in the present case. Consequently, the
opponent was wrong to claim that on account of the purported highly distinctive
character of the earlier mark, the element ‘&co.’ automatically has a
highly distinctive character.
In addition, the opponent’s
argument that the goods or services covered by the mark applied for might be
regarded as a further line of goods covered by the earlier marks, in so far as
the letter ‘m’ in the mark applied for would be perceived as an abbreviation of
the element ‘max’ in the earlier mark.
OHIM contended that it is rather the
earlier marks MAX&Co. which might be regarded as an abbreviation of Max
Mara. In that regard, the opponent reacted strongly by asserting, in essence,
that MAX&Co. is an independent mark in itself and that it does not derive
its renown from Max Mara.
In that regard, the GC held that OHIM’s
argument relating to the perception of the earlier marks is irrelevant to the
question whether there is a likelihood of confusion in the present case.
Consequently, there is no need to examine the history of the earlier marks.
Posted by: Laetitia Lagarde @ 16.28
Tags: General Court, likelihood of confusion, Max Mara, Mackays stores,
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