For all of us strill trying to cacth up on 2016's important case law, here is a report on joined cases T-359 and T-358/15 issued in September, whereby the EU General Court dismissed the appeals in the following oppositions:

The First Board of Appeal of EUIPO partly upheld the opposition. The relevant public consists of average consumers except for ‘auctioning services’, in respect of which the relevant public comprised businesses and companies, which had a higher degree of attention.

As regards the comparison of the marks at issue,  there is a certain visual and phonetic similarity between the marks since the earlier mark RICCI was entirely reproduced in the mark applied for. Conceptually,  consumers with an understanding of English would perceive the mark applied for as containing a reference to the person Romano Ricci, who was responsible for the creative work ‘Roméo has a Gun’. That meaning was given by the preposition ‘by’, which is commonly used in English to designate the ownership of a creative work. Furthermore, the title of a work was presented before the name of the person and given prominence, as in the present case, with larger letters and a decoration surrounding the title. In view of those considerations, the marks at issue are conceptually similar for consumers who would perceive the earlier mark RICCI as a name. Thus,  the marks at issue were similar overall.

As regards the goods within Class 3, they are in part identical and in part similar to those covered by the earlier mark RICCI. There is also a very low degree of similarity between the goods of the earlier mark RICCI contained within Class 3, and the goods of the mark applied for included in Class 25, because fashion houses had diversified into perfumery and launched perfumes bearing the same names as their clothing or footwear. Finally, there is a certain degree of similarity, albeit low, between the services of ‘presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make up and beauty preparations, shaving preparations’ in Class 35 and the earlier mark RICCI which protected the same goods included in Class 3.

On the other hand, there is no similarity between the services of ‘presentation of goods on communication media for retail purposes of footwear and clothing’ and the goods of the intervener included in Class 3 that are different from the goods related to those services. The other services included in Class 35 re different from the goods covered by the earlier mark RICCI. 

Therefore the Board of Appeal considered that there was a likelihood of confusion in respect of identical and similar goods and services due to the overall similarities between the marks at issue.

As regards Article 8(5) of Regulation No 207/2009, the application for goods within Class 3 and services of ‘Presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations, footwear and clothing’ included in Class 35 must be rejected on the basis of the opposition based on the earlier mark NINA RICCI enjoyed a reputation in the European Union for clothing and perfumes.

The reputation of the earlier mark NINA RICCI for ‘clothing’  and 'perfumes' is such that the EU public would establish a link between the marks at issue, despite the presence of additional elements in the mark applied for.  According to the Board of Appeal, there is a romantic connection between the marks at issue and it was not inconceivable that the mark applied for could take unfair advantage of the repute of the earlier mark NINA RICCI. Furthermore, the message conveyed by ‘a man with a gun’ would clearly be incompatible with the classical image and notions of femininity, sweetness, nature and happiness of the earlier mark NINA RICCI. The mark applied for would therefore be likely to be detrimental to the repute of the earlier mark NINA RICCI. Finally, the applicant had not demonstrated that there was due cause for the use of the mark applied for, and the documents produced to that effect (namely it was the applicant's name who is a descendant of Nina Ricci) for the first time before the Court had to be rejected.

The General Court upheld all the findings of the Boards of Appeal.