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In the latest twist in the long-running, cross-border trade mark battles between the luxury fashion brand Gucci and the mid-market fashion brand Guess, the EU General Court has held that the Guess logo above is dissimilar to – and therefore cannot be blocked by – the various Gucci logos above. The Court’s findings are specific to the logos in question, and may be subject to final appeal at the EU Court of Justice. However, the case illustrates the potential limits of seeking to protect “letter” logos for fashion and other brands.
Guess registered an EUTM for its logo in relation to cosmetics, apparel and accessories in classes 3, 9, 14, 16, 18, 25 and 35, and filed an EUTM application for the logo in relation to digital accessories in class 9. Gucci applied to invalidate the registration and opposed the application – based on various earlier EUTM registrations, and international registrations designating a number of EU member states, for seven versions of its logos in classes 3, 9, 14, 16, 18 and 25 – on the grounds that there was a likelihood of confusion between the logos, and/or that the Guess logo would take unfair advantage of and/or be detrimental to its famous logos.
In separate decisions, the EUIPO Cancellation Division rejected Gucci’s invalidity application, but the Opposition Division upheld Gucci’s opposition action. On appeal by (respectively) Gucci and Guess, the Fourth Board of Appeal then rejected both Gucci’s invalidity application and opposition, on the grounds that the logos were dissimilar. On appeal by Gucci, the General Court upheld the Board of Appeal’s decisions, on the following basis in particular:
The Court found (and it was not disputed between the parties) that the relevant territory was the EU, and the relevant public consisted of the general public with an average level of attention.
Applying well established case-law, the Court stated that the average consumer normally perceives a mark as a whole and does not analyse its various details – only rarely having a chance to compare marks directly, and so having to rely on an imperfect recollection. The Court then (nevertheless) proceeded to analyse the logos in detail, but with a view to concluding how they would be perceived as a whole, as follows:
- Based on the stylisation and positioning of the Guess logo’s elements, the Court held that, assessed as a whole, it will be perceived as a purely figurative and abstract mark, which is vertically and horizontally symmetrical. The logo was found to consist of four bold black elements in the form of irregular semi-circles of the same size, with short perpendicular lines pointing in different directions at their edges. Each of those elements is tilted slightly upwards or downwards and turns towards a different direction. The two elements in the upper part of the sign intersect and mirror each other, whereas they are merely joined to those in the lower part. Further, the elements in the upper part of the logo mirror those in the lower part.
- The Court found that the relevant public will not perceive the capital letter “G” in the Guess logo, but rather an abstract ornamental motif. In view of the logo’s stylisation and the fact that its elements are interlocking or joined together, the Court found that it could even be perceived both as reproducing stylised letters, such as the capital letter “X“’ or the letter “e”, and as a combination of figures and letters, such as the figure “3” and the letter “e”.
- The Court held that, in comparison, the first three Gucci logos above only consist of two elements and have a relatively compact and regular shape. Those elements are symmetrical and circular, and interlock or overlap in part and are placed opposite each other. In addition, the element on their left is positioned in the same way as the capital letter “G” (which it is supposed to represent), and the element on the right is the vertically inverted reflection of that element (for the first and second Gucci logos below), or the vertically and horizontally inverted reflection of that element (for the third Gucci logo). The Court held that, assessed as a whole, those marks are more like rings or the links in a chain. Further, in relation to the first and second Gucci logos, unlike the elements in the Guess logo, only the outline of those Gucci marks is black, with a white inside.
- The Court also found that the two components of the fourth and fifth Gucci logos, which are formed by a bold black line, do not touch each other (and, in the case of the fourth logo, are surrounded by four black squares). The capital letter “G” could be easily perceived in those logos.
- The sixth Gucci logo was held to consist of five small elements, each of which represents the capital letter “G” and its vertically and horizontally inverted reflection. Inasmuch as four of those elements are placed at the extremities of the logo and are connected to the central element by two small dots, so that together they form two diagonal lines, that logo is capable of being perceived, assessed as a whole, more as a cross pattern, than as a representation of motifs formed by the capital letter “G”.
- Finally, the Court found that the seventh Gucci logo resembles a repeated reproduction of the sixth logo, with the difference that the capital letter “G” and its vertically and horizontally inverted reflection, which is situated opposite it, are surrounded by small black squares rather than white circles. In view of the size of the capital “G” letters, their repeated reproduction and the fact that they seem to be connected by small black dots, the impression created by that logo is also more that of a decorative motif than a combination of capital “G” letters. It was therefore unlikely that the relevant public will perceive those capital “G” letters in that sign.
Based on the above, the Court concluded that the Guess logo and Gucci logos were different visually.
In view of the finding that the Guess logo will be perceived as a purely figurative sign without word elements, the Court held that it will not be pronounced – and that no phonetic comparison could therefore be carried out. A conceptual comparison could not be carried out either, since the Guess logo, as an abstract ornamental motif, has no meaning and the Gucci logos, which refer, at the very most, to the capital letter “G”, do not have any semantic content of their own.
The Court held that, assessed as a whole, the marks were therefore “completely different”.
Since the marks were found to be dissimilar, the Court held that it was unnecessary to examine Gucci’s other arguments relating to the “allegedly exceptionally high” level of distinctiveness of the Gucci logos, their reputation, or their membership of a family of marks. It also followed that there could be no likelihood of confusion between the marks.
The Court held that it also followed that the Guess logo would not take unfair advantage of or be detrimental to the Gucci logos. The Court acknowledged case-law establishing that unfair advantage or detriment could result from a lower degree of similarity between marks, provided that it is sufficient for the relevant public to make a link between them. However, that required “some similarity, even faint”, and the Court ruled out any similarity between the marks in this case.
Case – T-461/15 and T-753/15