I fatti costitutivi del diritto al marchio. I soggetti – Pagina 4

Il marchio denominativo PABLO ESCOBAR è non registrabil eper contrarietòà all’ordine poujbblucio

Trib. UE 17 April 2024 , T-25/23, Escobar inc c EUIPO, sull’art. 7.1.f reg. 2017/1001 applicato al marchio costituito dal nome del noto boss della droga:

<<17 As the Board of Appeal correctly pointed out in paragraphs 21 to 23 of the contested decision, the relevant public cannot be limited, for the purposes of the examination of the ground for refusal provided for in Article 7(1)(f) of Regulation 2017/1001, solely to the public to which the goods and services in respect of which registration is sought are directly addressed. Consideration must be given to the fact that the sign caught by that ground for refusal will shock not only the public to which the goods and services designated by the sign are addressed, but also other persons who, without being concerned by those goods and services, will encounter that sign incidentally in their day-to-day lives (see judgment of 15 March 2018, La Mafia Franchises v EUIPO – Italy (La Mafia SE SIENTA A LA MESA), T‑1/17, EU:T:2018:146, paragraph 27 and the case-law cited).

18 In addition, in order to apply that ground for refusal, it is necessary to take account not only of the circumstances common to all Member States of the European Union but also the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States (see judgment of 15 March 2018, La Mafia SE SIENTA A LA MESA, T‑1/17, EU:T:2018:146, paragraph 29 and the case-law cited).

19 In paragraph 24 of the contested decision, the Board of Appeal found that the goods and services covered by the mark applied for were aimed at a professional public and at the general public, whose level of attention would vary from low, in respect of everyday consumer goods, to high, in respect of very sophisticated goods or services. However, as stated in paragraphs 28 to 34 of the contested decision, it chose to assess, in the present case, the existence of the ground for refusal referred to in Article 7(1)(f) of Regulation 2017/1001 in relation to the Spanish public, on the ground that that was the public most familiar with the Colombian national called Pablo Escobar, born on 1 December 1949 and presumed to be a drug lord and narco-terrorist who founded and was the sole leader of the Medellín cartel (Colombia), on account of the privileged links, in particular historical links, between Spain and Colombia.

20 Those assessments, which, moreover, are not disputed by the parties, appear to be well founded and may be upheld, with the result that, in the present case, it is necessary to focus on the relevant Spanish public in order to assess, for the purposes of examining the present plea, the existence of the absolute ground for refusal referred to in Article 7(1)(f) of Regulation 2017/1001.

21 In paragraphs 46 to 54 of the contested decision, the Board of Appeal found that at least a non-negligible part of the relevant Spanish public would associate the mark applied for with Pablo Escobar, perceived as a symbol of a drug lord and a narco-terrorist.

22 In paragraphs 55 to 69 of the contested decision, it found that the mark applied for, understood in the manner referred to in paragraph 21 above, would be perceived as being contrary to public policy and to accepted principles of morality by the non-negligible part of the relevant Spanish public which would associate it with the crimes committed by the Medellín cartel or directly attributed to Pablo Escobar, which were unacceptable in modern democratic societies, as they were absolutely contrary to the recognised ethical and moral principles, not only in Spain but also in all EU Member States, and constituted one of the most serious threats to the fundamental interests of society and the maintenance of social peace and order. The mark applied for contradicts, for a non-negligible part of the general public exposed to it, the indivisible and universal values on which the European Union is founded, namely human dignity, freedom, equality and solidarity, and the principles of democracy and the rule of law, as proclaimed in the Charter, and the right to life and physical integrity. Furthermore, for the many consumers of the goods and services at issue who, in particular in Spain, share those values, the mark applied for could be perceived as being highly offensive or shocking, as an apology of crime and a trivialisation of the suffering caused to thousands of people killed or injured by the Medellín cartel, of which Pablo Escobar was the presumed leader. That suffering is not erased by the actions in favour of the poor or the role of ‘Robin Hood’ which the applicant or many Colombians attribute to Pablo Escobar in Colombia, or by the fact that he has become an icon of popular culture in Spain.

23 Lastly, in paragraphs 70 to 78 of the contested decision, the Board of Appeal rejected the applicant’s arguments alleging that signs identical with, or similar to, the mark applied for had already been applied for or registered, as trade marks, by national offices or by EUIPO, observing that, in some of those decisions, the signs at issue had been refused registration on the ground that they were contrary to public policy and to accepted principles of morality, and that, in any event and according to the case-law, the Board of Appeal was not bound by those decisions and had to rule solely on the basis of Regulation 2017/1001.

24 However, the applicant complains that the Board of Appeal did not examine, in the contested decision, whether the majority of that public would perceive the mark applied for as being immoral. It should be borne in mind that, according to the case-law, the assessment of the existence of a ground for refusal under Article 7(1)(f) of Regulation 2017/1001 cannot be based either on the perception of the majority of the relevant public taken into account or on that of the parts of that public that does not find anything shocking or that may be very easily offended, but must be based on the standard of a reasonable person with average sensitivity and tolerance thresholds (see, to that effect, judgment of 15 March 2018, La Mafia SE SIENTA A LA MESA, T‑1/17, EU:T:2018:146, paragraph 26 and the case-law cited; see also, to that effect, judgment of 27 February 2020, Constantin Film Produktion v EUIPO, C‑240/18 P, EU:C:2020:118, paragraph 42).

25 In the contested decision, the Board of Appeal correctly referred, in the light of the case-law cited in paragraph 24 above, to the perception of the persons who, within the relevant Spanish public taken into account, could be regarded as reasonable and having average sensitivity and tolerance thresholds and who, as such, shared the indivisible and universal values on which the European Union is founded.

26 Accordingly, the applicant is not justified in claiming that the Board of Appeal misinterpreted or misapplied or applied Article 7(1)(f) of Regulation 2017/1001 too liberally, by not referring, in that regard, to the perception of the majority of the persons making up the relevant Spanish public taken into account.

27 Furthermore, in the contested decision, the Board of Appeal was justified in finding that the persons referred to in paragraph 25 above would associate the name of Pablo Escobar with drug trafficking and narco-terrorism and with the crimes and suffering resulting therefrom, rather than with his possible good deeds in favour of the poor in Colombia, and would therefore perceive the mark applied for, corresponding to that name, as running counter to the fundamental values and moral standards prevailing within Spanish society.

28 The fact, evidenced by the documents produced in the file by the applicant, that the names of Bonnie and Clyde, Al Capone or Che Guevara have already been registered as EU trade marks, which have subsequently either expired or been cancelled, is not such as to call into question the assessments by which the Board of Appeal correctly interpreted and applied, in the present case, Article 7(1)(f) of Regulation 2017/1001, as interpreted by the case-law, by referring to the specific perception of the name Pablo Escobar by the persons referred to in paragraph 25 above.

29 In that regard, it should be noted that, according to the case-law, the decisions concerning the registration of a sign as an EU trade mark which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65)>>. –> Il precedente non è vincolante: il giudice (l’Ufficio EUIPO) è soggetto solo alla legge

Marchio di posizione confermato insufficientemente distintivo e quindi nullo dal Board of Appeal EUIPO

Anna Maria Stein su IPKat ci notizia della decisione 2nd board of Appeal EUIPO Cnitts KX ltd 19.02.2024, caso R 514/2023-2 .

Si trattava di marchio di posizione costituito da poligono a sei lati collocato in quattro punti di un occhiale:

il segno contestato:

40 The contested mark is not a mere figurative mark, but a position mark and has to be assessed as such. A trade mark may be devoid of distinctive character as a figurative mark but when applied for on a specific position or positions it may obtain a distinctive character. Thus, the position of the trade mark is relevant for the overall assessment.
However, it is to be stressed that the mark as such is also relevant for the overall
comparison.

41 The representation of the contested mark shows the position of four six-sided irregular black polygons (hereinafter ‘polygons’) each with a straight upper and lower edge and with the vertical sides formed by two parallel lines of equal length that converge inwards in a slightly concave fashion, each at the same angle. Two of these polygons are placed in a vertical direction on the front of the frames one on the left and one on the right, and two are placed horizontally on the outside part of the left and right temples. It is to be stressed that the shape of the glasses that are shown by means of dotted lines do not form part of the subject matter of the registration in accordance with Article 3(3)(d) EUTMIR

Giudizio:

49 As to the position mark showing four polygons instead of one, there is nothing about these polygons and as affixed on the goods that is unusual or memorable that might enable the relevant public to perceive the sign immediately as distinctive.
50 As correctly pointed out by the applicant, it is irrelevant whether the sign serves other functions in addition to that of an indication of origin, e.g. an aesthetic (decorative) function. However, the Board considers that the contested mark at hand does not serve (inherently) as an indication of origin. The position sign for which protection is sought on that, it is stressed, particular place of the frame and temples will be perceived by the relevant public (even to the extent it has a high level of attention) and in relation to all contested goods solely as a decoratively finished mechanism or rivet (a rivet as such has a dual purpose by having a functional and decorative purpose) that connects to or covers
the hinge that attaches the end piece or the front of the glasses to the arms (temples). (….)

54 Furthermore, as to the size of the elements of the four polygons and as affixed on the eyewear, the applicant itself admits that these elements are small but argues that this not relevant. It is true, that the size does not automatically disqualify any trade mark that is to be placed on eyewear frames from protection. Furthermore, the Board does not consider the small size of the four polygons at issue as a decisive factor. However, as an accessory remark, bearing in mind that it is unlikely that most of the consumers will analyse the mark in detail, the smaller the polygons at issue, the more difficult it may be for the
public to distinguish them from other plane figures. This finding of the public’s
perception is not changed by the applicant’s argument that the size is small due to the limited space for featuring a trade mark on eyewear frames.

Segue poi un ineressante aqnalisi del sondaggio demoscopico (mirante a provare che il segno sarebbe diustintivo presso i consumatiori tedeschi), § 59 ss

Marchio di colore e secondary meaning

Marcel Pemsel in IPKat dà notizia di una interssante sentenza che andrà studiata con attenzione (assieme ai suoi precedenti amministrativi) sui due temi in oggetto: Trib. UE T-652/22 del 6 maerzo 2024, Lidl c. EUIPO-MHCS (successore di Veuve Clicquot).

Si tratta di marchio di colore (anzi marchio figurativo era stato detto inizialmente: da studiarne la differenza disciplinare) assai noto, l’arancione della celebre casa vinicola:

Circa l’art. 4 del reg. 40/1994 (Segni atti a costituire un marchio comunitario: Possono costituire marchi comunitari tutti i segni che possono essere riprodotti graficamente, in particolare le parole, compresi i nomi di persone, i disegni, le lettere, le cifre, la forma dei prodotti o del loro confezionamento, a condizione che tali segni siano adatti a distinguere i prodotti o i servizi di un’impresa da quelli di altre imprese), il T. non vede provblemmi: la descrizione e il codice tecnico assieme rendono sufficientemente descritto il segno scelto:

<<57 However, in the present case, it must be stated, first, that the description of the mark at issue was indeed taken into account by the Board of Appeal (see paragraph 67 of the contested decision). Secondly, it must be pointed out, as observed by the intervener, that although the applicant submits that the scientific definition of the CIE satisfies neither the criteria of the judgment in Sieckmann nor those of Article 4 of Regulation No 40/94, it has not claimed that there is a contradiction between the colour sample at issue and the description containing the scientific definition of the CIE. When questioned on that point at the hearing, the applicant argued that the actual demonstration of the contradiction was not the subject matter of the present proceedings.

58 Thus, since, in the present case, the requirements of Article 4 of Regulation No 40/94, as set out by the judgment in Sieckmann, are met by the colour sample at issue (see paragraph 54 above) and are not contradicted by the description provided and the scientific definition that was indeed taken into account together (see paragraph 57 above), it is not necessary to examine whether the description of the mark at issue and the scientific definition of the CIE satisfy the criteria of that article and that judgment. According to the case-law cited in paragraphs 55 and 56 above, there is no requirement that the description of the mark, when included in the application form, must by itself satisfy the criteria of the article>>.

Più dettagliato è lo snodo motivatorio sulla prova del secondary meaning che deve riguardare tutta la UE. Prova assai complicata per chiunque, anche per i colossi del vino.

Qui non posso che rimandare alla sentenza, che conclude affermando l’insufficienza di valutazione e rimandand in sede amministrativa.

Nullità di combinazione cromatica come marchio perchè insufficientemente chiaro e preciso

Il 2° Board of Appeal EUIPO 07.02.2024m, Case R 2087/2023-2, Storch-Ciret Holding GmbH, decide sull’appello contro la decisione che aveva rigetgtat la domadna di retistarizone per il seguente segno

Conferma il 1 grado amministrativo per cui è insufficientemente preciso violando gli artt. 4 e 7.1.a):

24 On that basis, it must be found that the sign applied for does not meet the precision requirement specified in Article 3(3)(f) (ii) EUTMIR, which is also to be used when interpreting Article 4(b) EUTMR.
25 The rectangles reproduced in the representation mentioned are already visually reminiscent of a mere coloured pattern. Above all, however, it is evident from the nature of the applicant’s request, which is directed at a colour mark, that the representation in rectangles can only have a pattern. It cannot constitute a restriction of the colour shades to the shown sequence of rectangles. Such a view would be inconsistent with claiming as a colour mark (27/03/2019, C-578/17, Hartwall, EU:C:2019:261, § 40 et. seq.). If only a horizontal row of coloured rectangles with white intermediate areas were claimed, the trade mark would be a purely figurative mark which, as emphasised by the applicant, is precisely not claimed (cf. in this respect the first decision of the Office on the application
of 8 March 2021, 3 et seq.).
26 The distribution by volume of the colours claimed, which requires a sufficiently clear systematic arrangement (cf. denied in respect of ‘approximately 50 % to 50 %’ in 30/11/2017, T-102/15 ure T-101/15, BLUE AND SILVER, EU:T:2017:852, § 58 et seq.), is unclear in the present case. As stated, the reproduction of the shades in rectangles appears to be a simple representation of colour patterns. It may be that the applicant thereby wishes to express an identical distribution of these shades of colour.
However, there is no objective evidence of this, which means that there is ultimately a speculation. In addition, the quantitative proportion of the colour ‘white’ is also open to doubts. In the specific representation, it indicates a narrow distance between the individual shades of colour in the rectangles. However, as stated (para. 25), the application for protection is not restricted to a reproduction of the shades in rectangles. It is unclear how the proportion in other designs is supposed to be.
27 The representation applied for also leaves open the question of which systematic arrangement of the shades is otherwise claimed. The information provided by the applicant, if the entry as rectangles is not understood as conclusive, allows a large number of different combinations of colours to be associated (30/11/2017, T-102/15 — T-101/15, BLUE AND SILVER, EU:T:2017:852, § 58 et seq.; see also the colour mark ……….., 14/06/2012, T-293/10, seven squares of different colours, EU:T:2012:302, § 56 et seq.) comparable with the colour mark applied for. It is not even clear whether each of the colours has the same shape and be designed in parallel.
28 As a result, too many ambiguities remain in the present case, which cannot be to the detriment of the general public. In its submissions, too, the applicant itself only withdrew itself with the general assertion that what can be seen here was claimed. However, this is precisely unclear if no purely figurative design is claimed.
29 The applicant could have easily encountered these objections, for example by making use of the possibility of submitting a description in the field of colour combination marks by way of exception. It is correct that a description pursuant to Article 3(3)(f) (ii) EUTMIR is not formally mandatory. However, it remains the responsibility of the applicant to satisfy the precision requirement under Article 4 EUTMR or the requirement of a systematic arrangement in which the colours concerned are combined in a predetermined and uniform manner pursuant to Article 3(3)(f) (ii) EUTMIR. That did not happen in this case.
30 The refusal of the application pursuant to Article 7(1)(a) in conjunction with Article 4 EUTMR was therefore ultimately correct.
31 The examiner expressly refrained from refusing registration under Article 7(1)(b) EUTMR. That is logical, because such a decision requires a clear subject of the application, which cannot be assumed here. Nor does the Board currently see any basis for such a decision.
32 The applicant’s appeal therefore had to be dism

Non c’è confondibilità (somiglianza tra segni) se il marchio denominativo altrui è assai tenuamente evocato, anzi lasciato solo intuire

Si considerino i segni a paragone:

SEcondo il board of appeal EUIPO 19.02.2024, case R 1147/2023-1, Hyundai v. Global Trade services, non c’è somiglianza tra segni e quindi il primo è registrabile.

<<Contrary to the opponent’s claims, the Board agrees with the contested decision that consumers will not be able to read any letters in the contested sign but will perceive only vertical bars of different heights, two of which have dots. The contested sign is missing the horizontal lines, which is an essential component of the normal graphic representation of the verbal element ‘hyundai’, without which the relevant public will have difficulty in recognising that verbal element. Consequently, the contested sign will not be immediately and without any mental effort recognised as the verbal element ‘hyundai’. It is much more probable that the contested sign will be recognised only as the combination of some basic figurative elements. Only after an in-depth analysis, which consumers do not tend to perform (26/03/2021, R 551/2018-G, Device (fig.) / Device (fig.), § 52), might very stylised representations of the verbal element ‘hyundai’ be perceive>>

Marcel Pemsel in IPkat dà notizia della e link alla decisione.

Curiosamente una sua ricerca nella AI Gemini di Google gli dà questo esito: <<The image you sent me appears to be a trademark image filed with the United States Patent and Trademark Office (USPTO). It depicts a blue logo on a white background, but without any additional context, it is impossible to say for certain what the logo represents or what company or organization it belongs to. […] >>

A me invece, con uguale prompt, Gemini dà esito opposto, riferendosi proprio alla parola Hyundai:

Ma l’AI non è il consumatore medio, essendo la sua logica operativa assai diversa da quella umana (parrebbe).

Registrazione di marchio tridimensionale: un caso da manuale di descrittività

Victoria Thüsing su IPKat ci notizia di 5th board of appel EUIPO 04 gennaio 2024, proc. R 1934/2023-5, Winch Industry GmbH, su marchio tridimendionale relativo a tende da installare sul tetto di auitovetture e costituito dalla rappresetnazione delle tende stesso:

La differenza rispetto alle tende consuiete era indicata analitricamente dall’istanze.

Giustamente il primo grado e l’appello de quo rigettano la dom,anda. Tale possibile differenza è insigmnificante (se esistente) per cui l’effetto monopoistico prodotto dalla descrittività non verrebbe evitato.

Qui la pag. web del fascicolo mentre qui il testo diretto alla decisione.

Un interessante caso di marchio decettivo

Trib. UE 29.11.2023, T-107/23, Myforest Foods c. EUIPO, conferma la ingnnevolezza del marchio denominativo MYBACON per sostituti della carne (cl. 29: ‘Fungi-based meat substitutes; meat substitutes; prepared meals consisting primarily of meat substitutes including fungi-based meat substitutes’)

Ce ne notizia Marcel Pemsel in IPKat.

Giustamente il T. ritiene irrilevante l’argomento per cui il pubblico, che sceglie questi cibi, è attento oltre la media e non si fa ingannare.

Infatti sono acquisti fatti di solito in fretta e senza leggere i dettagli in etichetta; e comunque possono essere fatti anche da chi di solito non acquista cibi del genere, rientrando allora nel publico rilevante

Pemsel ricorda il nesso con la disciplina delle pratiche commerciali scorrette per ingannevolezza (da noi: art. 21 ss cod. cons.): concetto che non si discosta da quello della disciplina dei marchi de qua (art. 14.1.b cod. cons.).

Marcel coglie una differenza però , relativa ai materiali su cui ancorare il giudizio (le informazioni in etichetta non contano per i marchi, contano per la disciplina consumeristica). Forse esatto, alla luce dell’ampiezza del concetto di “pratica commerciale” (da noi: art. 18.1.d) del cod. cons.). Solo che anche un marchio in sè non ingannevole può diventare tale con l’uso (art. 21.2 c.p.i.): quindi la differenza potrebbe svanire.

Il rideposito del marchio con minime varianti per gli stessi prodotti è in mala fede (ancora su “The Flower Thrower” di Bansky)

Nedim Malovic in IPKat ci notizia della decisione Cancellation Division EUIPO CANCELLATION No C 47 807 (INVALIDITY) 21.12.2023, Full Colour Black Limited, v. Pesta Control office ltd:

<<The above-mentioned circumstances surrounding the application for the contested mark, as well as the chronology of the subsequent events, indicate that the EUTM proprietor’s filing strategy was used with the intention to circumvent the obligation to prove genuine use of the mark. Such conduct cannot be considered as a legitimate business activity having a justifiable commercial logic but, on the contrary, is incompatible with the objectives pursued by the EUTMR and may be considered as an ‘abuse of law’ (by analogy, 07/07/2016, T-82/14, LUCEO, EU:T:2016:396, § 52, 22/07/2019, R 1849/2017-2, MONOPOLY, § 78).

While it is true that there is no requirement for an EUTM applicant to declare or to show its intent to use a mark at the moment of its filing, there is also no justification for protecting trade marks unless they are actually used on the market according to the genuine use requirements prescribed by relevant (national/EU) law. Therefore, registrations that are intended to prevent third parties from registering or using identical/similar rights for identical/similar goods and/or services in the future (in relation to all or some of the identified goods and/or services), without any honest commercial logic, may be an indicator of the applicant’s dishonest intention (29/09/2021, T-592/20, Agate / Agate, EU:T:2021:633, § 69) and therefore considered made in bad faith.

All of these circumstances imply that the intention of the EUTM proprietor was indeed to take advantage of the EU trade mark rules by artificially creating the situation where it would not have to prove genuine use of its mark for the contested goods and services which are identical to those covered by its previous, identical EUTM registration.

Taking into account all the factual circumstances relevant to the present case, it is concluded that the filing of the application of the contested EUTM, insofar as it includes the goods and services already covered by an earlier EUTM registration, namely those mentioned above, was made without any commercial logic and thus, in bad faith.

As to the remaining contested goods and services that are not strictly identical to those covered by the EUTM proprietor’s earlier marks, the Cancellation Division considers that bad faith has not been proven, so the request for a declaration of invalidity should be rejected also as far as it is based on this ground (by analogy, 18/05/2023, R 836/2022-4, Cayenne, § 69)>>.

Sono state invece rigettate altre ragioni di nullità (mancanza di distintività ed altri motivi di malafede).

La (non) distintività dei pattern trademarks

Eleonora Rosati in IPKat ci notizia della confrma d’appello EUIPO secondo cui non è intrinsecamente distintivo il marchio seriale di Prada sotto rappresentato

o perlomeno non lo è per la maggior parte dei prodotti indicxati indomanda.

E’ infatti dal pubblico perceptico come decorativo, non come indicatore dell’rigina imnrpenditoriale (giudizio dubbio, data ormai la sua notorietà, ma forse alla fine esatto) e comnque siffuso nel commercio, almeno per certi prodotti

Si tratta di 2nd Board od Appeal 19.12.2023, case R 827/2023-2, Prada SA Applicant / Appellant .

Sul trattamento dei pattern trademarks:

<<24 That case-law, which was developed in relation to three-dimensional trade marks
consisting of the appearance of the product itself, also applies where the contested mark is
a figurative mark consisting of the two-dimensional representation of that product. In such
a case, the mark likewise does not consist of a sign unrelated to the appearance of the
products it covers (21/04/2015, T-359/12, Device of a checked pattern (maroon & beige),
EU:T:2015:215, § 24 and case-law cited). The same applies to a pattern mark consisting
of the two-dimensional representation of that product.
25 That is also the case for a figurative mark consisting of a part of the shape of the product
that it represents, inasmuch as the relevant public will immediately and without further
thought perceive it as a representation of a particularly interesting or attractive detail of
the product in question, rather than as an indication of its commercial origin (21/04/2015,
T-359/12, Device of a checked pattern (maroon & beige), EU:T:2015:215, § 25 and case-
law cited). The same applies to a pattern mark consisting of a part of the shape of the
product that it represents>>

Ineressanti sono poi le consiederaozipni sul raggruppamento dei prodotti in classi omogenee al fine del giudizio di distintività a

I marchi “Royal” e “Sussex Royal” per birre non sono confondibili

Così decide il Board of appeal EUIPO 19.12.2023, case R 1729/2022-4, Ui Phoenix Kerbl v. Royal Unibrew A/S (segnalazione di Alessandro Cerri in IPKat).

Marchio richiesto: SUSSEX ROYAL

Anteriorità opposta: ROYAL nonchè ROYAL UNIBREW (ma l’esame ha riguardato solo il primo segno)

Giustamente il BoA esclude confondibilità data la assenza di distintività di ROYAL (“segno di uso comune negli usi costanti del commercio”, se si applicasse il ns diritto, art. 13.1A cpi)

<<Overall assessment of the likelihood of confusion
45 The global assessment of the likelihood of confusion implies some interdependence between the relevant factors, in particular between the similarity of the signs and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the signs, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 18/12/2008, C-16/06 P, Mobilix, EU:C:2008:739, § 46; 05/03/2020, C-766/18 P, BBQLOUMI (fig.) / HALLOUMI, EU:C:2020:170, § 69).
46 It is also settled case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore trade marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).
47 On the other hand, where the signs overlap in a descriptive, non-distinctive or weak element, the global assessment of the likelihood of confusion will not often lead to a finding that that likelihood exists (12/06/2019, C-705/17, ROSLAGSÖL, EU:C:2019:481, § 55).
48 The ratio legis of trade mark law is to strike a balance between the interest of the proprietor of a trade mark in safeguarding its essential function, and the interests of other economic operators in having signs capable of denoting their goods and services. Therefore, excessive protection of marks consisting of elements that are devoid of any distinctive character or have a very weak distinctive character could adversely affect the attainment of the objectives pursued by trade mark law, if the mere presence of these elements in the signs at issue led to a finding of a likelihood of confusion without taking into account theremainder of the specific factors in the case (18/01/2023, T-443/21, YOGA ALLIANCE INDIA INTERNATIONAL, EU:T:2023:7, § 117-118).
49 In the present case, notwithstanding the fact that the goods covered by the signs at issue are identical or similar, the low degree of visual and phonetic similarity and at most low degree of conceptual similarity between them, in conjunction with the weak distinctiveness of the earlier mark, rule out the possibility that the relevant public might think that the goods at issue come from the same undertaking or from economically linked undertakings.
50 For the part of the public which perceives the contested sign as a conceptual unit clearly referring to the Duke and Duchess of Sussex (namely Prince Harry and Megan Markle), no likelihood of confusion exists, as the conceptual difference between the signs counteracts any visual and phonetic similarities that exist (04/05/2020, C-328/18 P, BLACK LABEL BY EQUIVALENZA (fig.) / LABELL (fig.) et al., EU:C:2020:156, § 74 and the case-law cited).
51 For the remaining part of the public, the coincidence in an allusion to luxury and superb quality (being a result of the common word ‘ROYAL’) is sufficiently outweighed by the additional verbal element ‘SUSSEX’ at the beginning of the contested sign. There is no risk that this difference will not be noted by the consumers. As a result, there is no direct likelihood of confusion. The contested sign will not be taken for the earlier mark (05/02/2007, T‑501/04, ROYAL / ROYAL FEITORIA et al., EU:T:2007:54, § 47-49).
52 The opponent claims that the contested sign will be perceived as a sub-brand of the earlier mark. However, for such an indirect likelihood of association to occur, the trade mark applied for must display such similarities to the earlier mark that might lead the consumer to believe that the sign is somehow connected with the earlier right (and therefore, that the goods covered by it have the same or a related commercial origin). This likelihood of association may occur only if the trade mark applied for shares with the earlier mark characteristics capable of associating the signs with each other (by analogy 15/03/2023, T‑174/22, Breztrev / Brezilizer et al., EU:T:2023:134, § 83; 25/10/2023, T‑511/22, HPU AND YOU (fig.) / DEVICE OF THREE HEXAGONS (fig.) et al., EU:T:2023:673, § 80). If the similarity between the signs resides only in an element that has a minimal degree of distinctiveness, such an association is not likely. For such an association to occur the signs would need to overlap in a distinctive element, or at least in the structure and/or stylisation. Average consumers do not usually take one component of a composite trade mark and compare it with another mark (even less if it is weakly distinctive).
53 The earlier mark has a low degree of inherent distinctiveness. It is apparent from the case-law, that such marks enjoy less extensive protection and, therefore, the likelihood of confusion is, in such cases, not likely (12/05/2021, T‑70/20, MUSEUM OF ILLUSIONS (fig.) / MUSEUM OF ILLUSIONS (fig.), EU:T:2021:253, § 91-92, 95).
54 Bearing in mind the above, the Board finds that no likelihood of confusion exists on the basis of the inherent distinctiveness of earlier international registration No 854 092 designating the European Union for any part of the public.
55 As a result, the claim of enhanced distinctive character and reputation of the earlier mark needs to be examined (as it might substantially affect the global assessment of likelihood of confusion)>>.

Rimanda però per l’esame dell’altro segno e della domanda basata sulla rinomanza (improbabilissima , direi, per tali sgni)

Resta da capire come secondo il diritto internazionale si possa impedire lo sfruttamento della notorietà altrui (i duchi del Succesx, Harry e Meghan), a prescindere da loro registraizoni come marchio