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General Court: Giovanni v. Giovanni Galli

In case T-559/13, the following opposition was rejected by OHIM and the General Court:

Vasconcelos & Gonçalves, SA (Portugal)

               Giovanni Cosmetics, Inc. (USA)

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Class 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

Class 3 `Soaps, shampoo and other haircare preparations, cosmetic preparations, perfumery

The goods are partly identical and partly similar and they are directed at the general public in the EU. The word element ‘giovanni galli’ of the mark applied for would be perceived by the relevant public as an Italian name consisting of the first name Giovanni and the surname Galli. According to the Board of Appeal (BoA), the element ‘galli’ of the mark applied for was more distinctive than the element ‘giovanni’. In that regard, it held, first, that surnames were, as a general rule, more distinctive than first names and, second, that the surname Galli was quite rare, even in Italy, whereas the first name Giovanni was fairly common.

The General Court disagreed with the assessment of the BoA: it is not appropriate to extend the case-law pursuant to which, in certain Member States, surnames have, as a general rule, a more distinctive character than first names so that it applies to the whole of the European Union. The BoA was therefore wrong to ascribe greater distinctiveness to the element ‘galli’ than to the element ‘giovanni’ for the whole of the relevant public.

Further the figurative element of the mark applied for does not have less relevance than the word element of that mark.

Regarding the overall comparison of the signs, there is rather low degree of visual similarity between the marks at issue. In addition, the marks are aurally similar even if the Court confirmed that the element ‘giovanni’ of the mark applied for cannot be held to be dominant.

Concerning the conceptual comparison, the BoA held that relevant public would associate the earlier trade mark with an Italian first name. While the earlier trade mark could not refer to a specific person, since that mark was common to all persons named Giovanni, the mark applied for could refer to and distinguish a specific person named Giovanni, namely a member of the Galli family. Thus, the surname could render the marks sufficiently dissimilar to enable the relevant public to distinguish a person named Giovanni Galli from all other persons named Giovanni.

The BoA had concluded that the conceptual differences between the marks at issue could counteract the aural similarity and the marks at issue, when considered as a whole, are dissimilar.

However, the GC - contrasting the Judgment Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02 with the present case- held that the name Giovanni Galli does not correspond to the name of a famous person and was therefore wrong to find that conceptual differences could counteract the aural similarity between the marks at issue.

In addition, the presence of the same Italian first name, which is not perceived as either common or rare, in trade marks covering cosmetic preparations and perfumery does not always permit a conclusion that there is a likelihood of confusion: in a situation involving a first name which the relevant public does not regard as rare, that public will not expect only one producer to use that name as an element of a trade mark.

Thus given that the degree of visual similarity between the marks at issue must be described as low, and that consumers will have the opportunity to see the goods in question before they purchase them, the significant differences between the marks at issue, particularly the visual differences, mean it is impossible for consumers to believe that the goods in question come from the same undertaking or from economically linked undertakings when they are sold under the marks at issue.

Even if the BoA made several errors in the contested decision in considering that (i) the first name Giovanni is perceived as a common Italian first name throughout the EU, (ii) surnames are, in principle, more distinctive than first names throughout the European Union, and (iii) the marks at issue, taken as a whole, are dissimilar. However, those errors cannot entail the annulment of the contested decision, because they have had no effect on its outcome

Therefore there can be no likelihood of confusion on the grounds of Art 8(1)b) CTMR.

Posted by: Laetitia Lagarde @ 09.59
Tags: general court, likelihood of confusion, galli, giovanni, duck, cosmetics,,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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