In Seven SpA v OHIM T-176/10 6 October 2011 (unreported) the General Court annulled decision of the Board of Appeal of the Office of Harmonization for the Internal Market (OHIM) that rejected an opposition against the mark SEVEN FOR ALL MANKIND on the basis that the Board had erred in finding that there was no similarity between that mark and earlier composite marks featuring predominantly the word “seven”.

BACKGROUND

In May 2005, the famous jeans company, 7 For All Mankind LLC, applied to register the word mark SEVEN FOR ALL MANKIND for various accessories within Classes 14 and 18. Seven SpA filed an opposition under Articles 8(1)(b) and 8(5) of Community Trade Mark Regulation (40/94/EC, now replaced by 207/2009/EC) based on three earlier composite “seven” marks, shown below, registered for goods in Classes 14 and 18 including rucksacks, leather goods and watches.  

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OHIM’s Opposition Division dismissed the opposition except as regards rucksacks in Class 18 and Seven SpA appealed. The Second Board of Appeal dismissed the appeal, finding that the opposing signs were not similar overall. In the absence of similarity between the signs there was no likelihood of confusion and therefore there was no need to establish whether the distinctive character or the reputation of the earlier marks had been proven, or to consider the other grounds of opposition based on Article 8(5).  

Seven SpA applied to the General Court to annul the Board’s decision on the ground that the Board was wrong to find no similarity between the signs.

DECISION

The General Court found a certain overall similarity between the marks at issue, annulling the contested decision and remitting the case back to OHIM. The Court disagreed with the Board that the word “seven”, like numerals in general, possessed very low distinctive character more accustomed to designating quantity or weight, holding that the Board should have carried out its analysis by reference to the goods at issue.

In the Court’s view, since the word “seven” did not have any particular link with the goods at issue, “seven” must be regarded as possessing an average degree of inherent distinctiveness. In any event, the importance of the presence of the word element “seven” in the overall impression of the trade marks must not be overlooked. Arguably, the element “seven” attracts the attention of the relevant public rather more successfully than the additional words “for”, “all” and “mankind”. Furthermore, for the English-speaking public, the expression “for all mankind” could easily be perceived as indicating the public for whom the trade mark is intended, and not as conveying an original and unusual message.

As regards the figurative elements, it was held that they are limited to an unoriginal typeface and, given their essentially ornamental function, are of lesser importance when compared with the word element “seven”, which will attract the attention of the relevant public to a greater extent.  

The Court also found that, contrary to the Board’s finding, the marks were similar phonetically and conceptually. The similarity being primarily determined by the word “seven”, understood as being the main word to which the words “for all mankind” applied. The Court accepted that the three additional words “for”, “all” and “mankind” produced “a remarkable series of words”, but that was not sufficient of itself to dispel the phonetic similarity created by the common element “seven”.  

COMMENT

Numbers and numerals can pose problems for brand owners. First there is the perception that such marks are poor indicators of origin and therefore lack inherent distinctiveness, and yet when they are employed as indicators of origin, arguably they readily acquire distinctive character. The iconic 7 For All Mankind jeans brand is a classic example. Unfortunately for them, someone beat them to the punch in terms of claiming the European monopoly on the “seven” accessories brand.  

When the case is remitted back to OHIM, 7 For All Mankind will have to hope that any arguments in respect of the reputation or acquired distinctiveness of the composite marks fall on deaf ears. Indeed, in light of the Court’s finding that the word “seven”, no matter how weak its distinctiveness, is prominent in the mark applied for and is “not insignificant” in the earlier marks, OHIM may feel compelled to find a likelihood of confusion in any case.