Do you see a 'G', 'X', '3', or
'E'? This was one of the considerations of the EU General
Court in dismissing Gucci's appeals against the Board of
Appeal's decision not to allow its challenges to Guess?'s
EU trade mark application and registration for 'four
interlocking capital letter G's'.
Appeals in the EU General Court
Gucci filed a notice of opposition and applied to invalidate
Guess?'s EU trade mark application and registration, based on
its earlier trade marks for different versions of a 'G'
next to or connected to another mirroring 'G'. Gucci relied
on the ground that Guess's mark was identical or similar to its
earlier trade marks and there was a likelihood of confusion by the
However, the Court held that the marks were not similar and they
left a different visual impression. The Court stated that the
average consumer rarely has the opportunity to compare the marks
directly and would rely on memory. The average consumer ordinarily
notices a mark as a whole (rather than considering its details) so
Guess?'s trade mark would be perceived as an abstract
figurative mark, rather than being noticeable for the combined
'G' letters. Furthermore, as the letters were connected,
Guess's mark instead could be perceived as stylised
'X's' or 'E's' or a combination of
'3' and 'E'. The Court then analysed Gucci's
earlier trade marks. For example, whilst Guess's mark was for
four irregular connected semi-circles with the edges pointing in
different ways, some of Gucci's marks only had two elements and
were regular and circular shapes, one mark had two separate (rather
than connected) 'G's', one mark was made up of five
elements, and one mark would be seen more as a cross pattern.
Just as the Board of Appeal had held earlier, using a letter to
make up a figurative mark does not itself mean that a competitor
using the same letter as part of its figurative mark will have a
similar mark, as there are various different ways to represent a
letter. Gucci had also argued that the Board of Appeal should have
considered the separate ground that Guess's mark was identical
or similar to Gucci's earlier marks, Gucci's marks had a
reputation, and Guess's mark took unfair advantage of, or was
detrimental to, the distinctiveness or reputation of Gucci's
earlier marks. However, the Court stated that it did not have to
consider this ground in more detail as it had fallen at the first
hurdle, as it had already found that the marks were not similar. It
would only have to go on to consider this ground if there had been
at least a very weak similarity.
Briffa advises on contentious and non-contentious trade mark
matters and assists its clients with trade mark applications,
opposition proceedings, cancellation proceedings and infringement
disputes in various jurisdictions around the world through its
network of international agents. If you have any queries or
concerns regarding your trade mark portfolio or brand management
generally, or if you would just like some general advice, please do
not hesitate to contact us.
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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
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