WEDNESDAY, 11 JANUARY 2017
General Court: E-Miglia v. Mille Miglia
In Case T‑458/15, The General Court dismissed the action in the following opposition:
The Fifth Board of Appeal of EUIPO first found that given that the earlier rights are EU trade marks, and that goods and services at issue are directed both at the public at large (for example, ‘clothing’ in Class 25) and at the professional public (for example, ‘business management’ in Class 35) therefore, the level of attention of the relevant public could vary from average to high.
Concerning the comparison of the marks at issue, first, there is visual similarity between those marks, given that they had a common element ‘miglia’ and, to a certain extent, also due to the fact that they had in common the letter ‘e’ preceding the element ‘miglia’. Secondly, there are obvious differences: 1) the relevant public will notice that the earlier marks begin with the word ‘mille’ whereas the mark applied for begins with the prefix ‘e-’ ; 2) differences linked to the stylised letters represented in white, a colour that contrasts with the black background in the shape of a parallelogram, in the mark applied for. Although those figurative elements are essentially decorative, they could not be regarded as completely negligible in the overall impression given by that sign. So the marks are therefore visually similar to a low degree.
Concerning the phonetic aspect, in spite of the differences linked to the rules of pronunciation applicable to the relevant languages, the pronunciation of the marks at issue would be seen as similar to the extent that the final sound ‘miglia’ was identical. So the marks at issue are therefore phonetically similar, although that similarity was below average.
Concerning the conceptual aspect, the combination of words ‘mille miglia’ means ‘thousand miles’ in Italian. At least the Italian-speaking part of the public will spontaneously establish a link between the earlier marks and the (endurance) motorcar race which was held in Italy from 1927 to 1957 and which was subsequently transformed, as from 1977, into an event reserved for vintage cars. The earlier marks will thus convey a concept that is clearly distinguishable from that of the word ‘miglia’ alone or, even more so, from the combination ‘e-miglia’. For this reason, there is even a conceptual difference between the signs at issue on the part of the Italian public. For the rest of the EU public, Rebel Media had argued that the expression ‘miglia’, in the sense of unit of measure and length, will be understood not only in Italy and in Italian, but also in most of the countries of the European Union. By way of example, the applicant cites ‘milje’ (Albanian), ‘meilen’ (German), ‘miles’ (English), ‘millas’ (Spanish), ‘miili’ (Estonian), ‘miles’ (French) and ‘milhas’ (Portuguese). However, as EUIPO has rightly observed, this claim is unfounded. The degree of similarity between these words and ‘miglia’ is not sufficiently high to find that consumers would think that they possess the same meaning. The applicant had not, moreover, provided any evidence in support of its argument. The same conclusion applies concerning the argument that, taking account of the reputation of the motorcar race, a large part of the consumers in the EU will make a connection between the marks at issue and that race.
Therefore, for a considerable part of the consumers in the relevant territory outside of Italy (for example in Germany, Holland, Poland, Sweden and the United Kingdom), the expression ‘mille miglia’ is meaningless. For that part of the public, there is a certain conceptual difference to the extent that the initial part ‘e-’ of the intervener’s sign evokes a concept relating to electronics. The BOA held, however, that it was not likely that those consumers would attach a lot of importance to that feature, given the widespread use of that prefix and the fact that that part of the public will more easily recall the more distinctive element ‘mille’ in the earlier marks.
The intrinsic distinctive character of the earlier marks is normal, because the combination of words ‘mille miglia’ would be perceived as a fanciful element by a substantial part of the relevant public outside of Italy.
Consequently, there is likelihood of confusion or the public that would understand neither the combination of words ‘mille miglia’ nor the element ‘miglia’, but only with regard to the goods and services deemed identical. Therefore, the opposition was upheld for the goods in Classes 12, 14, 18 and 25 and the services ‘organisation and arranging of advertising events’ in Class 35 and ‘entertainment’ in Class 41 covered by the mark applied for. On the other hand, the opposition was rejected concerning the remaining services included in Classes 35 and 41.
For more info on this historical car race, click here.
For another famous MILLE MIGLIA in Italy, see here.
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