General Court of the European Union, Judgment of 25 November 2010, T-169/09, gotcha v. GOTHA

The General Court considered the figurative trademark "gotcha" and the word mark "GOTHA" not similar in the field of clothing and accessories. The court stated that the consumers mainly focus on the visual dissimilarities. Furthermore, the conceptual connotation of "GOTHA" would exclude any likelihood of confusion with "gotcha."

The Italian Company Vidieffe Srl applied for the registration of the word mark "GOTHA" as a Community trademark for goods in classes 18 and 25. Perry Ellis International Group Holdings, Ltd. (Perry Ellis) opposed the application, relying on its figurative Community trademark, covering identical goods in class 25 and mostly similar goods in class 18 (different types of bags and purses, umbrellas, parasols, canes; clothing, footwear, headgear).

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OHIM's Opposition Division rejected the opposition, holding that due to their visual, phonetic and conceptual differences the signs were not sufficiently similar to give rise to a likelihood of confusion pursuant to article 8 (1) (b) of Regulation 207/2009 (Community Trademark Regulation - CTMR). On appeal, OHIM's Board of Appeal held that the signs were confusingly similar for all contested goods, except for "leather and imitations of leather", due to their strong phonetic similarity, which would attract the consumers more than the visual or conceptual impression of the signs.

The General Court of the European Union annulled this decision.

Comparing the signs, the court emphasized that there was no general principle that the phonetic aspects of a sign had a greater impact than visual ones. In the sector of clothing and accessories the consumers mainly chose products because of the visual images on the products. The visual comparison was, therefore, of higher (or at least the same) importance than the phonetic comparison.

The court found that from a visual perspective the signs were very different.

The signs were phonetically dissimilar, as "GOTCHA" and "GOTHA" were pronounced differently - by the German and English speaking consumers who would link them with different meanings and by all other consumers owing to the different rhythm and intonation of the signs ("GOTHA" would be pronounced "GO" -"THA" and "GOTCHA" "GOT"-"CHA").

Conceptually, "GOTCHA" (derived from the English "Got You!") would be understood by the English-speaking consumer and Gotha was the name of a city in Germany. For the other relevant consumers in the European Union (in particular in France and Italy), "Gotha" was part of the common language meaning "elite."

Globally assessing the marks, the court concluded that mainly owing to the visual differences of the signs, but also due to their phonetic and conceptual differences, there was no likelihood of confusion pursuant to article 8 (1) (b) CTMR.

As a result, the General Court rejected Perry Ellis' opposition