CABINET CHAILLOT
PATENTS TRADEMARKS DESIGNS
French Patent & Trademark Attorneys - European Patent Attorneys - Representatives before EUIPO
ISO 9001 CERTIFIED
In the present case, figurative EU trademark for a head of lion surrounded by a chain with 3D aspect was filed for designating in particular jewelry, pins and clothing.
The EUIPO examiner refused some of the designated goods, such as cufflinks and buttons because lions’ head is frequently used in the manufacture of buttons, cufflinks and items of jewelry, so that the trademark applied for naturally comes to mind as a typical design for those goods. The trademark lacks distinctive character for these goods. The refusal has been confirmed by General Court in 2020 (T-331/19) and application was published.
Opposition was filed based on figurative Polish trademark for a head of lion in a circle with a stylized aspect, against jewelry goods in class 14 and clothing in class 25 also designated by the Polish trademark. The goods are identical to similar.
Opposition Division considered that both marks show a version of a lion’s head depicted in a calm state, with a similar fringe, downward gaze and closed mouth. They are very clearly rendered depictions of the lion looking straight ahead. Both signs are depicted in grey and both lions are on a circle or circular background.
The differences in stylization between the signs were not considered as sufficient to exclude a likelihood of confusion and opposition was granted.
The 4th Board of Appeal dismissed the appeal on 21/06/2022 and confirmed the likelihood of confusion.
The General Court annulled the decision of the 4th Board of Appeal and the case was reallocated to the 5th Board of Appeal (T-564/22 of 20/12/2023).
Both marks depict a version of a lion’s head, both lions are on a circle or circular background. The earlier mark is a less stylized two-dimensional version with dotted lines on the inner side of the circle. The lion in the application is a more realistic three-dimensional relief-like depiction surrounded by a circular chain.
The Board of Appeal takes into account the distinctive character of the different elements, in particular the head. An assessment must be made of the greater or lesser capacity of the element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings.
It is a well-known fact, that in the fashion sector, it is a banal or common practice to use depictions of lions or lions’ heads or, more generally, of wild, strong and exotic animals in the commercial presentation or the decoration of goods, such as those in Classes 14 and 25.
Therefore, all the graphic elements in the marks at issue have a low degree of inherent distinctiveness, as none of them is ‘more distinctive’ than any other.
There is an average degree of visual similarity between the marks at issue and the signs are conceptually identical.
The purchase of goods in Classes 14 and 25 is based particularly on their visual aspect. The consumer’s choice is mainly made by looking at them, with the result that the visual aspect is of greater importance in the global assessment of the likelihood of confusion.
The Opposition Division attached too much importance to the conceptual identity between the marks at issue, since, firstly, the choice of the goods at issue is based mainly on their visual aspect and, secondly, the concept depicted in the marks at issue, namely a lion’s head, is used in a banal and commonplace way in the commercial presentation or the decoration of goods in the fashion sector.
In view of the weak distinctive character of the coinciding concept of the marks and the weak distinctive character of the earlier mark, the fact that the marks at issue are visually similar to an average degree is not sufficient to find there was a likelihood of confusion even if the goods at issue were identical.
Opposition is therefore rejected (#EUIPO R 96/2022-5 of 02/09/2024)