When an opposed trade mark is held to be similar to an earlier
mark, and to cover both identical and
similar goods or services, that mark will usually
be rejected in relation to all those goods or services, on the
grounds that there is a likelihood of confusion. In a relatively
unusual decision, the EU General Court has held that, although the
marks were similar, their low degree of similarity meant that the
opposed mark should only be rejected in relation to the
identical – but not the
similar – goods and services in
Rebel Media Ltd filed an EUTM
application for the figurative mark "e-miglia" (shown
above left) in relation to a range of goods and services in classes
12, 14, 18, 25, 35 and 41. The application was opposed by
Automobile Club di Brescia, based on a number of earlier EUTM registrations for the word mark MILLEMIGLIA covering
goods and services in those same classes. Mille Miglia means
"thousand miles" in Italian, and is a vintage car race
dating back to 1927.
The Court found that all the relevant goods and services were
identical, with the exception of the following services, which were
only found to be similar:
"advertising services" and "organisation and
managing of trade fairs and exhibitions" (in class 35);
"sporting and cultural activities" and
"entertainment" (in class 41).
The Court found that the marks were visually similar to a
"low degree", and phonetically similar to a "below
average degree". Since the opposition was based on earlier
EUTM registrations, the relevant
territory was the whole EU. Even if the marks would be conceptually
dissimilar to the Italian-speaking public, the conceptual
comparison was assessed as being "neutral" for the
non-Italian speaking public, since they would not understand the
words "miglia" or "mille".
On a global assessment, the Court held that, in view of the low
visual and phonetic (and neutral conceptual) similarity between the
marks, there was only a likelihood of confusion in relation to the
relevant identical goods and services, but not the merely similar
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guide to the subject matter. Specialist advice should be sought
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
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.
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