On 20 June 2001, Cristina Ricci's predecessor in title applied to register the device mark "Stradivari 1715" (the opposed mark) as a Community Trade Mark (CTM) for goods in classes 14, 16 and 18 (jewellery made of precious metals, articles made of paper, and leather articles). The mark was intended to replicate the famous violin makers actual signature. Her predecessor's application was opposed by Stradivarius Espana under article 8(1)(b) of the CTM Regulation. It was opposed on the grounds that it was a similar mark, registered for similar or identical goods, to its mark "Stradivarius" (the prior mark, registered for jewellery made of precious metals under class 14 and articles made of paper under class 16). As such, it was likely to cause confusion.
That application was dismissed, as was an appeal from it, on the grounds that the marks were not similar.
In reaching his decision that there was no likelihood of confusion between the two marks, the Opposition Officer found that the opposed mark was partly illegible and would be read by the average consumer as "stvadinari 1715", "jtvadinari 1715", "stvdivari 1715", "jtvdivari 1715" or "jeudivari 1715" but not as "Stradivari 1715". As a result he concluded that there was no visual or aural similarity between the marks and no conceptual similarity between them. The Appeal Tribunal agreed with the Opposition Officer's decision.
Stradivarius Espana therefore appealed to the Court of First Instance.
The Court of First Instance dismissed the appeal, holding that:
- A mark will be illegible if it is effectively impossible to read or decipher and if it is so difficult to decipher, understand or read that a reasonably attentive and well-informed consumer could only understand it by undertaking an analysis which goes further than the limit of the analysis he could reasonable be expected to undertake when acquiring the goods in question.
- With regards to the prior mark, the average consumer would almost immediately recognise the letters "tradivarius". The stylised treble clef would bring to mind a capital S, especially since Stradivari violins are sufficiently well known by the average consumer to make the link between the letters "tradivarius", the treble clef and the Latinised name of Antonio Stradivari. Therefore the average consumer would identify the term "Stradivarius" when buying the goods.
- With regards to the opposed mark, the number "1715" is immediately legible and understandable. However, the word "Stradivari" is not. The average consumer is likely to interpret it as being "stvadinari", "jtvadinari", "stvdivari", "jtvdivari" or "jeudivari" and not "Stradivari".
- Knowledge of the signature of Antonio Stradivari is not part of the cultural baggage of the average consumer of the goods in question.
- Since there is no other connection with music in the opposed mark, the average consumer will not create a link between it and Antonio Stradivari.
- Given the differences in the font used, the inclusion of 1715 in the opposed mark and the different backgrounds used in the marks, the opposed mark and the prior mark are not visually similar.
- In assessing the aural similarity of two marks, it is necessary to consider all their elements. In the present case, the only pronounceable element of the prior mark was the word "Stradivarius". By contrast, the opposed mark had two potentially pronounceable elements: "Stradivari" and "1715". . The Court of First Instance ("CFI") agreed with the hearing officer that the script element of the opposed mark can be read by consumers in varying ways. Accordingly the CFI also agreed with the hearing officer's conclusion that it could not be said that the two marks were aurally similar.
- In assessing conceptual similarity, with regards to the prior mark, the average consumer would make a link between it and Antonio Stradivari. The average consumer will not, however, make a link between the opposed mark and Antonio Stradivari. The number "1715" and Stradivari's signature will only allow specialists to make an association between the mark and the "Stradivari Cremonese" violin, and hence Antonio Stradivari. Therefore, the marks are not conceptually similar.
- Taking all the above into consideration the prior mark and the opposed mark were not similar.
The court's decision on the meaning of "illegible" seems to equate the effort incurred by the average consumer to decipher an illegible trade mark with the effort which the court assumes an average consumer incurs when the court applies the "likelihood of confusion" global assessment test.
This reasoning may seem harsh on proprietors of existing marks. It may provide a way out for applicants seeking to register marks which are relatively indecipherable, although once deciphered, are similar to their existing marks. We expect trade mark owners to use their marks, and in the process to educate their users about them, so that eventually consumers may well see the opposed mark and know that it means "Stradivari 1715". Existing owners may therefore have been denied their right to object until it is too late to do so. It could be argued that at least conceptual and aural (if not visual) comparison of the marks should be done on the basis of assumed comprehension.
While Cristina Ricci has secured a registration, it is likely that her registration will be severely restricted. The court based its decision that the opposed mark was not confusingly similar to the prior mark on a finding that the average consumer would not read the mark as "Stradivari 1715". The scope of her monopoly does not, it seems, extend to any aural use of the words "Stradivari 1715". If she uses her mark aurally, it is likely that Stradivarius Espana could sue for trade mark infringement.
In England, with UK trade marks and under similar circumstances, Ms Ricci would not be able to rely on section 11(1) Trade Marks Act. This, it is argued, must be correct. Consider the owner of a CTM which consists of a stylised word written in the Cyrillic alphabet. It would be unacceptable if the owner could rely on the CTM
- to prevent others using a visually identical or similar graphic mark;
- as a defence to his own use of the sound it produces; and,
- to prevent registrations of marks written in English which produce an identical or a similar sound to it since neither pre-existing owners of trade marks nor potential infringers can identify the subject matter of the mark with sufficient certainty from its registration to oppose it or know if they will infringe.