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The General Court has upheld two Board of Appeal decisions in an opposition to a figurative “ricci” mark based on two earlier registrations for RICCI and NINA RICCI.
The applicant, Arrom Conseil, applied to register the mark above left as an EU trade mark (“EUTM”):
The application covered various goods and services including soaps, perfumes and cosmetics (amongst others) in class 3, various clothing, footwear and headgear goods in class 25 and various retail services and commercial information services (amongst others) in class 35.
The application was opposed by the French fashion and fragrance group, Puig France SAS. Puig is the owner of brands such as Carolina Herrera, Nina Ricci, Paco Rabanne, Jean Paul Gaultier, Penhaligon’s and L’Artisan Parfumeur.
Puig filed two separate sets of opposition proceedings, both of which covered all of the goods and services covered by the application. Both of the oppositions were based on Puig’s earlier EUTMs for NINA RICCI and RICCI and relied upon various goods in class 3 (including perfumery) and various clothing, footwear and headgear goods in class 25 respectively. The oppositions were on the basis there was a likelihood of confusion with both of its earlier registrations (based on Article 8(1)(b) EUTMR) and unfair advantage of the registration for NINA RICCI, being an earlier mark with a reputation in the EU (based on Article 8(5) EUTMR).
The Opposition Division rejected the oppositions and Puig duly appealed. The Board of Appeal found that Puig succeeded on both grounds in relation to a number of goods and services covered by the application.
Arrom Conseil appealed both decisions to the General Court.
Likelihood of confusion (Article 8(1)(b) EUTMR)
In relation to likelihood of confusion, the Board of Appeal had focussed on Puig’s RICCI registration and found that the marks at issue were similar overall. In particular, it noted in respect of the conceptual comparison, that English-speaking consumers would perceive the mark applied for as a reference to the person “Romano Ricci”, who was responsible for the creative work “Romeo has a gun”. It also considered that the title of a piece of work was presented before the name of its creator. It therefore concluded that the marks at issue were conceptually similar for those consumers who would perceive the mark RICCI as a name.
The Board of Appeal had therefore held that there was a likelihood of confusion in respect of the goods and services which were identical or similar to those covered by Puig’s earlier marks.
Neither party contested the Board of Appeal’s assessment of the similarity of goods, so the focus of the General Court’s decision was on the similarity of the marks and the global assessment of likelihood of confusion.
The General Court did not agree that the Board of Appeal had founded its comparison of the signs only on the basis of the word element “by Romano Ricci” in the applied-for sign. It also rejected Arrom Conseil’s argument that “Romeo has a gun” was the dominant element of its sign. In doing so, it agreed with the Board of Appeal that the relevant public would not only give its attention to this element of the mark since it gave the impression of the title of an artistic work, but would seek to supplement it with further information. Therefore, the word element “by Romano Ricci” had an independent distinctive position in the mark.
It also agreed with the EUIPO’s submission that it is usual in the field of fashion (as regards personal care items and high fashion clothing) to refer to the designer or source of a product. This element of a mark would therefore play an important role in such marks.
The General Court further rejected the argument that there was no risk of confusion because Puig has apparently accepted the existence of the third party mark STEFANO RICCI. Whilst it was not “wholly inconceivable” that, in certain cases, the coexistence of marks on the market might diminish the likelihood of confusion, it was necessary for the applicant to demonstrate that such coexistence was based on the absence of any likelihood of confusion. The mere existence of other third party rights would not suffice.
The Board of Appeal’s findings that there was a likelihood of confusion and that the opposition should succeed in respect of the relevant goods and services were therefore upheld by the General Court.
The Board of Appeal had also upheld Puig’s opposition based Article 8(5) EUTMR. For this ground, Puig had relied on its earlier NINA RICCI registration which enjoyed a reputation in the EU for perfumes and clothing. The Board of Appeal concluded that the message conveyed by a “man with a gun” would be incompatible with the classical image and notions of femininity conveyed by the NINA RICCI mark and therefore would likely be detrimental to the repute of the NINA RICCI mark.
Arrom Conseil did not dispute the Board of Appeal’s finding that Puig’s earlier NINA RICCI mark enjoyed a reputation for various perfumery goods in class 3 and for clothing in class 25. The focus of the General Court’s decision was therefore on whether the applied-for mark would take unfair advantage, or be detrimental to the distinctive character or repute, of the NINA RICCI mark.
The General Court upheld the Board of Appeal’s finding of unfair advantage. Based on evidence submitted by Puig, the Court found that the NINA RICCI mark had a reputation as a mark conveying floral, romantic and classical concepts and that, in addition to reproducing the name “ricci”, the applied-for mark conveyed the same concepts. Therefore, it could not be excluded that Arrom Conseil could take unfair advantage of the NINA RICCI mark. Since the General Court had upheld the Board of Appeal’s finding on unfair advantage, it did not go on to consider arguments based on detriment to the repute or distinctive character of the NINA RICCI mark.
Arrom Conseil also failed to convince the General Court that it had due cause for using the mark applied for. It had argued that “Ricci” was a common Italian surname, that “Romano Ricci” was the name of its founder (and was actually a descendant of Nina Ricci), and that the NINA RICCI mark had co-existed in Europe with the mark STEFANO RICCI. The General Court found that there is no unconditional right to the registration of a first name or surname as an EUTM and stated that Arrom Conseil had not advanced any arguments explaining how a relationship could constitute due cause for registration of its mark.
The General Court therefore upheld the Board of Appeal’s decisions in full.
These decisions appear to be harsh from the perspective of the applicant. Its mark comprised seven words and various figurative elements, and the only overlap with the earlier registrations is the single word element “RICCI” (which does not have a particularly prominent placement in the applicant’s mark). The applicant might therefore have considered the marks to be sufficiently differentiated to counteract any likelihood of confusion.
The General Court’s decision underlines the importance of the particular goods and services covered when making a mark-for-mark comparison. Here, the Board of Appeal and General Court were prepared to take into account the specific circumstances of the fashion industry and the importance of personal names in that industry. Based on these decisions, it may be difficult to obtain an EUTM registration for fashion-related goods or services if there is any overlap with the surname element of an earlier mark covering similar goods or services. This may mean that fashion designers – particularly those with common surnames – may have to be creative when it comes to registering trade marks for their fashion businesses in future.
T-358/15 and T-359/15