European Union: EU General Court Finds All Art Too Similar

Last Updated: 15 February 2017
Article by Christopher Benson and Pollyanna West

The EU General Court has overturned a decision of the First Board of Appeal and upheld an opposition to the registration of a figurative EU mark incorporating the words "SHOP ART" (above left) in relation to leather goods and clothing in classes 18 and 25.

The General Court's decision was based on a likelihood of confusion with an earlier EUTM incorporating the word "art" (above right).

Manifatture Daddato SpA ("Maniffature") applied to register a figurative sign featuring the words SHOP ART in the following classes:

  • Class 18: 'Leather and imitations of leather, and goods made of these materials and not included in other classes; bags, totes, handbags, backpacks, trunks and travelling bags, key cases, key holders made of leather, pocket wallets, purses, briefcases of leather, cardholders, umbrellas'; and
  • Class 25: 'Clothing, in particular T-shirts, shirts, sweaters, trousers, skirts, jeans, jackets, swimsuits, underwear, headgear, footwear'

The Art Company B & S ("The Art Company") opposed the application based on the following earlier marks:

  • An EU figurative mark featuring the word "art" (above right) covering, inter alia, 'Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery, portfolios, handbags, rucksacks and wallets' in Class 18, 'Clothing, footwear, headgear, in particular boots, shoes, sandals and slippers' in Class 25, and 'retailing via global computer networks, retailing of clothing, footwear, headgear, of leather and imitations of leather, goods made from these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, portfolios, bags, rucksacks and wallets' in Class 35; and
  • A Spanish mark featuring the word "art" covering 'Clothing, footwear (except for orthopaedic shoes), headgear' in Class 25.

For procedural reasons the opposition was only examined in relation to the EU mark featuring the word "art".

The Opposition Division had initially upheld the opposition citing a likelihood of confusion. The Board of Appeal overturned this decision however finding that there was no likelihood of confusion between the marks.

The General Court's finding

The General Court agreed with the Board of Appeal that the relevant public was the public at large with a normal degree of attentiveness and that the relevant territory was the EU. It also agreed that the goods covered by the marks were identical or similar.

It found however that the Board of Appeal had been wrong in its finding that there was no likelihood of confusion between the two marks. Firstly it had been wrong to find that there was no visual similarity between the signs in light of the fact that both signs featured the word "art" and a star which preceded the word element. The inclusion of the word "shop" in the applied for mark was not enough to differentiate the two signs. Manifatture and the EUIPO tried to argue that according to settled case law more attention should be paid to the word "shop" than the word "art" in the applied for mark because it was the beginning of the mark. The General Court dismissed this argument stating that the word "art" had enough visual impact not to be dominated by the word "shop". The General Court stated that the other differences between the marks i.e. the colour and style of the font and the number of points on the stars were not significant enough to exclude the similarities between the signs.

In considering the phonetic similarity the Court noted that the mark applied for contained one syllable more than the earlier mark and that the first syllable in the applied for mark was different to the earlier mark. The Court found however that this was not enough to alter the fact that the marks contained an average phonetic similarity. This was predominantly because the signs were both short and the syllable "art" was such as to attract and retain the attention of the relevant consumer when pronounced.

With regard to the conceptual similarities between the marks, the Court found that the marks had an average conceptual similarity due the presence of the word "art" in both marks. The Court noted in reaching this conclusion that the word "art" is an elementary word that the majority of the relevant public in the EU would understand. The Court considered the fact that the word "art" was a laudatory term and therefore of weak distinctive character but decided that the word "shop" was descriptive and therefore even less distinctive. The presence of the word "shop" in the applied for mark was thus not enough to overcome the conceptual similarities between the marks.

In light of the similarities between the two marks the Court found that there was a likelihood of confusion between the two marks and therefore that the Board of Appeal's decision should be annulled.

Case T 735/15

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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