Il secondo non è vero che sia dissimilar dal primo: è similar, anche se solo in parte.
Si noti l’evidente tentatico del secondo di porre una netta differenza nel nome, la cui rilevanza è duplicemente notevole all’interno di ciascun marchio: sia perchè il nome prevale sul disegno nella percezione cnsumeristica (lo stesso BoA lo ricorda) sia perchè è scritto assai ingrande nel caso specifico.
Quindi il rigetto dell’opposizione era ingiustificato e la procedura torna alla Opposition Division per vedere se ciò basta per un giudizio di confondibilità (essenzialmente data la rinomanza dell’anteriorità: <<It must be borne in mind, in particular, that, depending on the degree of recognition of the earlier trade mark, even a low degree of similarity between the signs may be sufficientfor the assumption of a link within the meaning of Article 8(5) EUTMR>>, § 25)
<<18. The earlier figurative mark likewise consists of a rectangular shape which resembles a-bottle label. On a dark-green background there is a white rectangle bordered by a green line followed by a white line. There is a horizontal banderolein orange in the middle of the Zei chens, which contains the text ‘Jägermeister’ in black stylised letters. Underneath it is the word element ‘SELECTED 56 BOTANICALS’ in considerably smaller lettering together with further details, which are barely legible on account of their even smaller font. Above the orange stripred is a white and golden green circle which is decorated with golden-coloured leaves on its underside. The stylised head of a stag with antlers in a jet-circle is depicted in the green circle. Above and framed by the anchor is a circle in a lighter green with a white Latin cross. For the above reasons, the most distinctive element of the earlier sign is the word element ‘Jägermeister’. Nevertheless, the brown targeted will not-neglect the graphic design as a whole and in particular the representation of a stag’s head on a green circle with a cross and the green and orange colour schema in the overall impression of the earlier trade mark.
19. Despite the differences that exist, in particular the differences in the most distinctive word components ‘ST. Joseph’ and ‘Jägermeister’ and in terms of the figurative elements (head of a man in contrast to the head of a deer), the opposing signs have a low degree of visual similarity, as theirgraphic arrangement is very similar overall. The signs are identical in terms of their colour schema (green, white, gold and orange/red), their basic rectangular shape, their construction and their essential graphic elements and their arrangement to one another (circular green element with a portraitsimilar strip above an orange-coloured/red banderole).
20. Both the earlier sign and the central left-hand part of the sign applied for consist of an inner (dark) white rectangle which is firstly bordered by a green, then a dark-green white line and then a dark green line. Both signs contain a red or orange band positioned in the centre with a black lettering above which a dark-and-white and golden green circle with a gold floral decoration is attached. In the dark green circle, there is in each case a stylised front view of a head (by a man in the contested sign and a stag in the earlier sign), which is surrounded by a jet circle in each case.
21. The signs under comparison therefore have a low degree of visual similarity.
22. The signs are aurally dissimilar, as the most distinctive word elements ‘ST. Joseph’ of the contested sign and ‘Jägermeister’ of the earlier sign un are pronounced differently-depending onthe different relevant languages.
23. The signs are conceptually dissimilar. Some of the consumers will understand the word element ‘ST. Joseph’ of the contested sign as a reference to the naked Josef. The word-element ‘Jägermeister’ of the earlier sign as a whole has no meaning. Nevertheless, the German-speaking consumer in any case immediately recognises therein thefact that the terms ‘Jäger’ and ‘Meister’ are combined, and therefore a meaning that differs from ‘ST. Joseph’. Furthermore, for all the consumers targeted, the signs differ in the meaning of the respective figurative elements, namely the depiction of a head of a man in the application, in contrast to the depiction of a head of a deer in the earlier trade mark.
24. Overall, the signs under comparison therefore have a low degree of similarity.
25. The Opposition Division considered the signs to be dissimilar and therefore, from their point of view, did not examine the further requirements ofthe asserted opposition. However, since, as stated above, the signs have a low degree of visual similarity, this must be remedied. It must be borne in mind, in particular, that, depending on the degree of recognition of the earlier trade mark, even a low degree of similarity between the signs may be sufficientfor the assumption of a link within the meaning of Article 8(5) EUTMR (-16/01/2018, 398/16, COFFEE ROCKS (fig.)/STARBUCKS COFFEE (fig.) et al., EU:T:2018:4, § 78)>>.
L’opposizione è parzialmnente (sotto il profilo merceologico) accolta.
<< e) Global assessment, other arguments and conclusion
Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods/services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods/services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings.
The Opposition Division has assumed in section d) of this decision that the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier marks have an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
The goods and services are assumed to be identical or similar to a high degree and they target the general and professional publics. The degree of attention varies from average to high.
The similarities between the signs arise from the depiction of a bird in all the signs, which leads to a low degree of visual similarity and at least an average degree of conceptual similarity (if not identity), while the signs are aurally not comparable, as concluded above. However, the signs differ considerably in the particular ways the common elements are depicted, such as their orientations and different shapes of wings, different circular and/or semi-circular shapes and, in particular, the additional verbal elements of the contested sign, which have no counterparts in the earlier marks. The aforesaid differences are particularly relevant when assessing the likelihood of confusion and all these differences will lead to a rather distinct overall impression created by the signs. Even though both parties have used the same concept of a silhouette of a bird in their signs, this itself is not sufficient to give rise to a likelihood of confusion or association, since the differentiating elements are clearly perceivable and sufficiently outweigh the similarities of a depiction of a figurative bird.
The opponent cannot rely on the protection of the depiction of a type of animal, or its part, per se. In the case of two purely figurative signs (or, by analogy a purely figurative sign versus a figurative sign containing a figurative component, as in the present case), which depict a certain type of animal, or a part of it, the owner of an earlier mark can only preclude registration of a contested sign if the figurative depiction itself shows significant similarities to the latter sign (18/04/2018, R 1547/2017-2, DEVICE OF A BLACK BIRD (fig.) / RABE et al., § 35; 28/05/2009, R 1841/2007-1, Form eines Mammuts / ELEPHANT WORLD-TOURS et al., (fig.), § 56). However, the similarities of the figurative elements in the present case are not considered significant, while important differences between the signs are introduced by the verbal elements of the contested sign, as mentioned above, which have the strongest impact in that sign.
Consequently, in the Opposition Division’s point of view, even if there is a conceptual link between the signs, on account of the coinciding concept conveyed by the figurative element of a silhouette of a bird, the considerable visual differences between the signs, as described above, are sufficient to prevent any likelihood of confusion, especially bearing in mind that the relevant public displays an average to high level of attention. Consequently, the fact that the signs contain a depiction of a silhouette of a bird is not sufficient in itself to lead to a finding of likelihood of confusion. The Opposition Division considers that the consumers will be able to safely distinguish between the signs.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.
The opponent has also based its opposition on the following earlier trade mark:
international trade mark registration designating the European Union No 1 457 089 (figurative mark).
This earlier mark invoked by the opponent is less similar to the contested mark. This is because it contains additional figurative components, namely a circle and some figurative lines, which overall give an impression of a simplified depiction of the Sun. These additional elements further differentiate between the signs visually and they also introduce an additional differing concept, which is not present in the earlier trade marks compared above. Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods>>.
C’è pure un interessante esame dell’opposizione basata sulla rinomanza, p. 10 ss , anche essa accolta parzialmente.
Si sta diffondendo la prassi di cercare di sfruttare la notorietà altrui rovesciando la direzione di un’immagine rinomata (e qui pure aggiungendovi un nome): tentativo per ora rischioso .
Le differenze però sono qui maggiori: spt. direi nel primo il felino sta saltando, mentre nel secondo sta correndo e poi i colori sono invertiti.
<<In making the visual comparison of two marks depicting an animal, the Opposition Division must take care not to apportion excessive weight to a coincidence in features that are merely generic to this part of the animal body (e.g. legs, tails), since these traits, which are common to felines, differ significantly in the details of the marks under comparison (13/07/2017, R 110/2017 2, DEVICE OF A FLYING BIRD (fig.) / DEVICE OF A FLYING BIRD (fig.) et al., § 61; 29/07/2020, R 2901/2019 5, DEVICE OF A SHEEP (fig.) / DEVICE OF A RAM (fig.), § 30). Indeed, these two depictions of a feline show some significant differences. This is caused predominantly by the fact that the depiction of a feline in the contested sign is very simplified and the morphologic features of felines are not clearly, immediately and effortlessly visible. Instead, that sign consists merely of a feline’s contour and requires some mental effort in order to recognise and identify a feline. This contrasts sharply with the depiction of a feline in the earlier mark, which is less streamlined and more detailed/elaborate, and contains more clearly identifiable morphologic features of a feline than the contested sign, such as details of its head, ears, eyes, etc.
In this regard, consumers are capable of perceiving differences between the stylisation of signs. The key point is how the signs at issue are normally perceived overall and not how the stylistic differences between them may be perceived in the event that a particularly meticulous consumer is in a position to examine the graphic stylisation and draw comparisons between them (20/07/2017, T 521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 49)>>
La risposta è di dubbia esattezza: il consumatore ricorda ad un livello di astrattezza maggiore , almeno per i beni di largo consumo
(anche qui segnalazione di Marcel Pemsel su IPKat che correttamente solleva il problema del grado di astratezza con cui ricorda il consumatore)
<<The three relevant screenshots produced by Plaintiff show clear labeling of Defendants’ entry, using Defendants’ name and prominently labelled as an “Ad,” and with no use of Plaintiff’s trademark or confusingly similar language or content.
Reasonably savvy Internet users with a strong incentive to select the right lawyer would not be confused by these clearly labeled ads into believing that Defendants were Plaintiff.
Plaintiff produces no survey evidence showing a likelihood of confusion, and its evidence that, at most, 0.215% of all consumers exposed to Defendants’ ads were in fact confused by them is simply not enough to show a likelihood. Two-tenths of one percent is not an appreciable or significant portion of consumers exposed to Defendants’ keyword-generated ads. Plaintiff does have a strong mark, but no reasonable jury viewing Plaintiff’s thin evidence could find that potential clients viewing Defendants’ clearly labeled ads are likely to be confused into thinking Defendants were in fact Plaintiff.
The 25 irrelevant screenshots produced by Plaintiff – screenshots taken during a time when Defendants’ were not buying Plaintiff’s name as a keyword – reinforce the Court’s conclusion. Each of the irrelevant screenshots was produced by searching for “lerner & rowe,” “lerner rowe,” or a variation of these words. Doc. 68-3.
And even though Defendants had not purchased Plaintiff’s name as a keyword, Defendants’ ads appeared in the search results along with ads for other personal injury law firms.
Google’s algorithm apparently called up similar law firms when a specific law firm was searched for. See, e.g., Doc. 57-6 at 15 (including an ad for azinjuredworker.com), 17 (getlawyersnow.com and palumbowolfe.com), 18 (arjashahlaw.com), 20 (getlawyersnow.com), 22 (hutzler law.com), 28 (larryhparkerphoenix.com). These screenshots show what Internet users find when searching on Google for Lerner & Rowe – ads for a variety of law firms.
As with all searches on Google, the consumer then must scroll through the returns to decide which entries are worth clicking on.
Because Defendants’ entries use their name and are clearly labeled “Ad,” the consumers would know they are seeing an ad for another law firm, as would be true with the other firms seen in the screenshots. The Internet user would then, as the Ninth Circuit has recognized, “skip from site to site, ready to hit the back button whenever they’re not satisfied with a site’s contents.” Toyota Motor Sales, 610 F.3d at 1179. This is not confusion; this is typical Internet searching. And because “the owner of the mark must demonstrate likely confusion, not mere diversion,” Plaintiff has presented insufficient evidence to survive summary judgment. Network Automation, 638 F.3d at 1149>>, P. 19-20.
(notizia e link alla sentenza dal blog del prof. Eric Goldman)
In particolare non c’è somiglianza visuale, §§ 40 ss.
<< 45 In the present case, it must be stated that the signs at issue share certain features, that is, a central element which includes, inter alia, an open smiling mouth showing teeth, large eyes, a top hat, two arms wearing gloves and two legs wearing shoes. In addition, they are represented in the same colours – white, grey and black.
46 Nevertheless, it must be stated, similarly to EUIPO, that the features mentioned in paragraph 45 above are represented differently in each of the signs. The central element of the sign applied for is an anthropomorphic sphere, while that of the earlier mark is an ovoid. Moreover, aside from the open mouth, the features of the central element of each of the signs are not the same. While the sign applied for contains two wide-open eyes and eyebrows, the earlier sign has a single eye and does not have visible eyebrows. The hats situated over the central elements of the signs at issue are also distinct. Whereas the hat in the sign applied for is of average size, tipped to the left and contains an uppercase ‘b’, the hat in the earlier sign is large, tipped to the right, contains an ‘s’ or dollar sign and some banknotes. Differences can also be established in the position of the arms and proportion of the legs in relation to the central element of each of the signs at issue. Although the sign applied for is represented with straight arms and shorter legs in relation to the central element, the earlier sign is made up of one bent arm and another arm resting on a cane, and legs of the same length as the central element.
47 In the light of those assessments, the Court finds that the overall impression produced by the signs at issue is so different that the relevant public will not establish a link between those signs on the ground that they share certain features and the same colours. They are two fantasy figures stylised differently, that is, on the one hand, a happy figure in the shape of a ball with wide-open eyes, straight arms and short legs and, on the other hand, a figure in the shape of a one-eyed, slightly deformed face with one bent arm and another arm resting on a cane, and legs of the same length as the central element.
48 Contrary to the applicant’s claim, in paragraphs 15 and 16 of the contested decision, the Board of Appeal only described the signs at issue before carrying out a visual, phonetic and conceptual comparison of the signs. The visual comparison of those signs was carried out in paragraph 17 of that decision, in which the Board of Appeal specified that that the signs at issue shared a central part resembling an imaginary face with two legs, two arms and a hat, but that the overall impression given by those signs was very different. Consequently, the applicant’s arguments relating to the fact that paragraphs 15 and 16 of the contested decision take account of certain features or details of the signs at issue must be rejected.
49 The same applies to the applicant’s argument that the Board of Appeal found that the overall impression given by the signs at issue was very different, although it had specified that those signs shared their most relevant aspects, which drew the attention of the relevant public. In that connection, it is sufficient to note that, as is apparent from paragraph 17 of the contested decision, the Board of Appeal merely observed that, despite the fact that the signs at issue shared certain features, their overall impression was very different. Accordingly, the Board of Appeal did not in any way find that the signs at issue shared the most relevant aspects which drew the attention of the relevant public.
50 Regarding the applicant’s argument that, in essence, the features shared by the signs at issue concern the central element and are the most relevant elements, creating a first impression of the signs at issue without engaging in an analysis of their details, and that those signs are represented in the same colours, it must be observed that, as is apparent from paragraphs 46 and 47 above, those features are represented differently, thereby creating a different overall impression given by the signs at issue. Accordingly, even if the consumer does not memorise details, he or she will be able to identify the differences between the signs and, to that extent, will not establish a link between the marks at issue.
51 Regarding the applicant’s argument that the Board of Appeal failed to take account of the arguments in paragraphs 14 to 19 of the application, directed against the decision of the Opposition Division, it should be borne in mind that the Board of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before it; the reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see, to that effect, judgment of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55 and the case-law cited). It is apparent from paragraphs 21 to 26 of the application that the applicant was able to understand the reasons for the Board of Appeal’s finding that the signs at issue were not similar visually.
52 Therefore, the Court finds that the Board of Appeal did not err in its assessment when it observed that the signs at issue were different visually>>.
1) in the present case, the earlier word mark, consisting of the element ‘thermrad’, and the dominant word element of the mark applied for, ‘termorad’, are of the same length, both being formed of eight letters. They thus overlap in so far as they contain the sequence of the letter ‘t’ followed by the string of letters ‘erm’ and ‘rad’. However, those signs are differentiated by the letters ‘h’ and ‘o’ and, in the mark applied for, by the geometric shape contained in the letter ‘t’ and the expression ‘aluminium panel radiator’, as well as by the stylisation of the typeface used.
76 In the light of the analysis contained in paragraph 67 above, it is clear that the elements differentiating the signs at issue either occupy a secondary position owing to their purely decorative character, as regards the stylisation of the typeface and the red geometric component, or are negligible, so far as concerns the expression ‘aluminium radiator panel’, due to its reduced size and proportion. Consequently, it must be held that the similarities between the word elements ‘thermrad’ and ‘termorad’ in the signs at issue outweigh their differences, since, in the present case, those differences are not sufficient to attenuate the visual similarities.
77 Consequently, the Board of Appeal justifiably considered that the marks at issue were visually similar to a high degree.
In the present case, the signs at issue coincide phonetically in that the word elements ‘therm’ and ‘term’ sound identical when pronounced, since, as is apparent from paragraph 66 of the contested decision, the letter ‘h’ is not pronounced in German, Dutch or French. The sound of the syllable ‘rad’ is also the same in the signs at issue. On the other hand, they differ in the sound of the letter ‘o’ and the expression ‘aluminium panel radiator’ in the mark applied for.
83 As regards that expression, it should be found, as the Board of Appeal considered, that it is highly probable that it will be ignored by the relevant public given its descriptive character and the secondary position it occupies owing to its smaller size and position at the bottom of the mark applied for (see, to that effect, judgments of 11 September 2014, El Corte Inglés v OHIM – Baumarkt Praktiker Deutschland (PRO OUTDOOR), T‑127/13, not published, EU:T:2014:767, paragraph 53; of 7 June 2018, MIP Metro v EUIPO – AFNOR (N & NF TRADING), T‑807/16, not published, EU:T:2018:337, paragraph 48; and of 14 June 2018, Lion’s Head Global Partners v EUIPO – Lion Capital (LION’S HEAD global partners), T‑310/17, not published, EU:T:2018:344, paragraph 39).
84 Consequently, the Board of Appeal was entitled to find that the marks at issue were phonetically similar to a high degree.
<<the Board of Appeal found that, despite the fact that the word elements ‘thermrad’ and ‘termorad’ did not convey a clear concept in relation to the goods at issue, both signs contained a word element which referred to the concept of ‘heat’ or ‘temperature’, namely ‘therm’ and ‘termo’. Nevertheless, since that similarity was based on an element the distinctiveness of which was weak, the Board of Appeal concluded that the signs at issue were conceptually similar to at least a low degree.
86 Those findings of the Board of Appeal, which, moreover, are not disputed by the applicant, are free from error and must therefore be upheld>>.
Distintività del marchio anteriore: normale, § 95
<< 102 First of all, although the applicant insists, in the present case, that the distinctiveness of the earlier mark is weak, it has nevertheless been found, contrary to his assertion, that the distinctiveness of the earlier mark was normal.
103 Furthermore, it has been established that the goods covered by the mark applied for were identical or similar to the goods covered by the earlier mark. Similarly, as is apparent from paragraphs 77, 84 and 86 above, the signs at issue have a high degree of visual and phonetic similarity and a low degree of conceptual similarity.
104 In addition, the public to be taken into account for the purpose of examining the likelihood of confusion consists of both the general public and professionals, both displaying a high level of attention on account of the fact that the goods at issue are purchased infrequently and are expensive. In that regard, in so far as, in paragraph 82 of the contested decision, the Board of Appeal included in the assessment of the existence of a likelihood of confusion the part of the relevant public displaying a high level of attention, the Board of Appeal’s error, established in paragraph 34 above, is of no consequence.
105 In the light of all of the factors analysed above, it must be held that the conditions for finding that there is a likelihood of confusion are satisfied in the present case, on account of, in particular, the fact that the goods at issue are identical or similar and the overall similarity of the signs at issue, which are both formed of a fanciful and, therefore, distinctive word element in relation to those goods, and the normal distinctive character of the earlier mark, despite the high level of attention of the relevant public. Thus, in view of the interdependence of the various factors taken into account, it cannot be ruled out that the average consumer of the goods at issue residing in Benelux might believe that those goods come from the same undertaking or from economically linked undertakings.
106 Consequently, the complaint relating to the global assessment of the likelihood of confusion must be rejected>>.
OK. Ci pare tuttavia assai dubbio che il marchi odenominativo THERMRAD per <<<Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilation and water supply; radiators (heating); radiators for central heating’.>> sia valido in quanti mediament distintivit. Ci pare invee assai descrittivo e quindi nullo.
La fase amminsitrativa va male a Nestlè, il cuji segno è ritetnuto confondibile con l’anteriotià.
Uguale esito giudiziale.
In sintesi, Nestlè <<alleges, in essence, two errors made by the Board of Appeal in the global assessment. It maintains, first, that the Board of Appeal should have applied the case-law on short signs and followed EUIPO’s practice in that regard. Accordingly, a likelihood of confusion should have been excluded as the visual comparison is, in principle, decisive. In the applicant’s view, those principles were not mentioned at all, even though it had raised that matter in the proceedings before EUIPO. Secondly, the Board of Appeal did not take account of the fact that the visual aspect of the signs at issue plays a particularly important role with regard to the goods at issue. Those goods are sold in self-service stores, where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product>>§ 68.
Replica del Trib.:
<<It should be recalled that the Board of Appeal found, in paragraph 47 of the contested decision, that the earlier international registration had an average degree of inherent distinctiveness. In addition, having concluded that the conceptual comparison of the signs at issue was neutral, it took into account, in the context of the examination of the likelihood of confusion, the identity or high degree of similarity of the goods at issue, the low degree of visual similarity and the high degree of phonetic similarity between those signs in order to reach the conclusion that there was a likelihood of confusion, in the present case, for the Bulgarian-, Hungarian- or Latvian-speaking public at large with a level of attention which could vary from average to high.
65 The Board of Appeal added, in paragraph 48 of the contested decision, that even though the visual aspect was likely to play a role in the selection of the goods concerned, it was highly conceivable that, confronted with the international registration at issue, consumers would perceive it as a variation of the earlier international registration, configured in a different way according to the type of goods covered. That would in fact lead them to believe that the identical or highly similar goods originate from the intervener or, as the case may be, from an undertaking economically linked to the intervener.
66 First, it must be found that the applicant is wrong to maintain that the Board of Appeal failed sufficiently to take into account the visual differences between the signs at issue. As stated in paragraph 55 above, the Board of Appeal did indeed note, in the context of its global analysis of the likelihood of confusion, that there was a low degree of visual similarity between those signs. That does not mean, however, that it disregarded the case-law on short signs. Although it is true that, in short signs, small differences may frequently lead to a different overall impression, that is not the case here, since a significant part of the relevant public readily recognises the element common to the signs at issue, which is their dominant element.
67 In the light of those considerations, it is necessary, secondly, to take into account the fact that the signs at issue are phonetically similar to a high degree, if not identical, which is also the case for the goods at issue. Those findings cannot be ignored in the global analysis of the likelihood of confusion, contrary to what the applicant appears to maintain, but also play an important role in accordance with the principle of interdependence as referred to in paragraph 61 above. It should be noted, in that regard, that, even though the goods at issue are sold on a self-service basis and the visual aspect is of some importance, that does not prevent the phonetic similarity between the signs from becoming apparent when the goods are sold orally or mentioned in radio advertisements, or in oral conversations which are likely to give rise to an imperfect recollection of the sign. [è il punto più interessante]
68 Similarly, having regard to the identity conferred by the element common to the signs at issue, it is conceivable, as the Board of Appeal stated, that consumers, confronted with the international registration at issue, will perceive it as a variation of the earlier international registration, configured in a different way according to the type of goods covered, which will lead them to believe that the identical or highly similar goods originate from the intervener or, as the case may be, from an undertaking economically linked to the intervener.
69 It is appropriate in that regard to reject the applicant’s argument that, in order to arrive at that finding, the Board of Appeal was wrong to refer to paragraph 49 of the judgment of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties) (T‑104/01, EU:T:2002:262), given that it applied to customs in the clothing sector and did not concern short signs the stylisation of which would be capable of indicating the commercial origin of a product, but signs consisting of the words ‘fifties’ and ‘miss fifties’, the addition of ‘miss’ being capable of being understood as a clothing line for women.
70 It should be noted, in that regard, that the Board of Appeal merely stated that there was a likelihood of confusion irrespective of the particular importance of the visual aspect, given that, visually, the Bulgarian-, Hungarian- or Latvian-speaking public at large will always perceive the same alphanumeric combination in the signs at issue, albeit stylised differently. Furthermore, contrary to what the applicant appears to state, it is conceivable that consumers in sectors other than the clothing sector, including the food and dietetic supplements sector, may believe that identical or highly similar goods originate from the same undertaking or from economically linked undertakings when faced with signs containing identical verbal or numerical elements, even if those signs are short.[mi pare esatto]
71 Accordingly, it should be concluded that, in the light of the fact that the signs at issue are visually similar to a low degree and phonetically highly similar or even identical, that a conceptual comparison is not possible, that the goods at issue are identical or highly similar and that the level of attention of the Bulgarian-, Hungarian- or Latvian-speaking public at large may vary from average to high, the Board of Appeal was correct to find that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001>>.
Cass. 18.02.2022 n. 5491, sez. 1, rel. Scotti, rigetta il ricorso di Armani che aveva creato modelli con striscia colorata troppo simile a quella notissima di K-Way
Non ci sono spunti particolarmente interssanti, essendo la sentenza quasi tutta dedicata a rigettare censure dettagliate della motivaizne , miranti ad un riesame dei fatti, obiettivo stoppato dalla SC .
Vediamo alcuni passi
<<Nessuna norma impone di valutare la capacità distintiva e le percezioni del pubblico alla stregua di indagini demoscopiche, che costituiscono solo un possibile strumento di indagine, neppur previsto espressamente dalla legge e da ricondursi semmai nell’ambito di una consulenza tecnica d’ufficio, sì che il giudice è libero di formarsi il proprio convincimento sulla base di ogni possibile mezzo di prova.
10.5. Nelle pagine da 13 a 20 della sentenza impugnata, scrutinando il secondo motivo di appello di A., la Corte subalpina ha pienamente accolto il principio della necessità della riconoscibilità della striscia colorata per la tutela come marchio di fatto; ha posto in evidenza la rilevanza probatoria in tal senso della documentazione prodotta da parte delle attrici in primo grado riguardante la prova della percezione da parte del pubblico dei consumatori, tra l’altro contestata solo in misura molto parziale e non specifica (pag. 16, capoverso); ha invocato a sostegno il precedente di Corte di Giustizia UE 24.6.2004 circa la possibilità di tutela di combinazioni cromatiche, purché rappresentate graficamente in modo preciso secondo codici di identificazione internazionalmente riconosciuti e secondo una disposizione sistematica che associ i colori in modo predeterminato e costante e cioè in modo tale “da consentire al consumatore di percepire e memorizzare una combinazione particolare che egli potrebbe utilizzare per reiterare, con certezza, una esperienza di acquisto” (pag. 16, secondo capoverso); ha accertato nel caso concreto la ricorrenza di tali caratteri; ha quindi affrontato, ancor più specificamente, il cuore della censura di A. e cioè l’assunto che i consumatori non percepissero la striscia colorata come indicatore di provenienza, ma solo come elemento ornamentale; ha conferito rilievo scriminante per selezionare l’uso ornamentale dall’uso distintivo alla costanza e alla stabilità (accertate e verificate in concreto) il cui scopo è “quello di determinare nei consumatori la percezione di un rapporto fra prodotti e produttore, il che può avvenire solo se i primi siano caratterizzati sempre da un determinato segno, cui, conseguentemente, i consumatori ricollegano la loro origine”; ha accertato che il segno “striscia colorata” era stato apposto per molti anni senza alcuna variazione su prodotti di tipo diverso e ne ha tratto argomento per coglierne la funzione di indicatore di provenienza, caratterizzata dalla sua indifferenza ai prodotti contraddistinti; ha escluso che una covalenza decorativa possa inficiare la accertata e prevalente funzione distintiva.>> [qui si coglie il fatto che hga sostenuto la CdA nel ravvisare distinvitità]
2) l’onere della prova consueto vale anche pe la prova negativa:
<<Secondo la giurisprudenza di questa Corte, l’onere probatorio gravante, a norma dell’art. 2697 c.c., su chi intende far valere in giudizio un diritto, ovvero su chi eccepisce la modifica o l’estinzione del diritto da altri vantato, non subisce deroga neanche quando abbia ad oggetto “fatti negativi”, in quanto la negatività dei fatti oggetto della prova non esclude né inverte il relativo onere, tanto più se l’applicazione di tale regola dia luogo ad un risultato coerente con quello derivante dal principio della riferibilità o vicinanza o disponibilità dei mezzi di prova, riconducibile all’art. 24 Cost. e al divieto di interpretare la legge in modo da rendere impossibile o troppo difficile l’esercizio dell’azione in giudizio. Tuttavia, non essendo possibile la materiale dimostrazione di un fatto non avvenuto, la relativa prova può essere data mediante dimostrazione di uno specifico fatto positivo contrario, o anche mediante presunzioni dalle quali possa desumersi il fatto negativo (da ultimo, Sez. 6 – 3, n. 8018 del 22.3.2021, Rv. 660986 – 01; Sez. L, n. 23789 del 24.9.2019, Rv. 655064 – 01; Sez. 5, n. 19171 del 17.7.2019, Rv. 654751 – 01).>>
3) giudizio di confondibilità:
<< 16.3. Ancora molto recentemente questa Corte (Sez. 1, n. 39764 del 13.12.2021; Sez. 6.1, n. 12566 del 12.5.2021) ha ricapitolato i principi che debbono governare il giudizio di confondibilità e ha riaffermato che l’apprezzamento del giudice del merito sulla confondibilità fra segni distintivi similari deve essere compiuto non già in via analitica, attraverso il solo esame particolareggiato e la separata considerazione di ogni singolo elemento, ma in via globale e sintetica (Sez. 1, n. 8577 del 6.4.2018, Rv. 647769 – 01; Sez. 1, n. 1906 del 28.1.2010, Rv. 611399 – 01; Sez. 1, n. 6193 del 7.3.2008, Rv. 602620 – 01; Sez. 1, n. 4405 del 28.2.2006, Rv. 589976 – 01).
Tale accertamento va condotto, cioè, con riguardo all’insieme degli elementi salienti grafici e visivi, mediante una valutazione di impressione, che prescinde dalla possibilità di un attento esame comparativo, avuto riguardo alla normale diligenza e avvedutezza del pubblico dei consumatori di quel genere di prodotti, dovendo il raffronto essere eseguito tra il marchio che il consumatore guarda ed il mero ricordo dell’altro (cfr. quanto evidenziato in motivazione da Sez. 1, 17.10.2018, n. 26001, attraverso il richiamo alla citata Sez. 1, n. 4405 del 28.2.2006).
Il principio inoltre è conforme all’insegnamento della giurisprudenza della Corte di giustizia, secondo cui il rischio di confusione tra marchi deve essere oggetto di valutazione globale, in considerazione di tutti i fattori pertinenti del caso di specie: valutazione che deve fondarsi, per quanto attiene alla somiglianza visuale, auditiva o concettuale dei marchi di cui trattasi, sull’impressione complessiva prodotta dai marchi, in considerazione, in particolare, degli elementi distintivi e dominanti dei marchi medesimi (Corte Giust. CE 11.11.1997, C-251.95, Sabel, 22 e 23; Corte Giust. CE 22.6 1999, C-342.97, Lloyd, 25).
Se è vero poi che il giudizio deve essere sintetico e basato sull’impressione complessiva agli occhi del pubblico di riferimento e non analitico, condotto mediante un minuzioso e dettagliato raffronto degli elementi di somiglianza e dissomiglianza dei due segni, non è men vero che l’obbligo di motivazione che incombe sul giudice gli impone, per scongiurare l’arbitrio, di dar conto delle ragioni che hanno orientato il suo giudizio e mettere in luce gli elementi che attirano primariamente l’attenzione del fruitore>>.
4) il giudizio sulla confonibilità è di fatto, § 16.5: non è così, è di diritto. “Di fatto” è solo quello sui fatti storici.
Di fronte a segni assai simili, la domanda di Rolex è stata ugualmente rigettata per assenza dell’affinità merceologica.
Questo quanto alla tutela ordinaria.
Quanto a quella straordinaria da rinomanza (tutto da vedere se sia esatto qualificarla <extra ordinem>), è anche essa pure rigettata : per carenza dei requisi posti dallrt. 12.1.e) cpi, anzi polsti dall’art. 8.5 reg. 207/2009.
In sostanza Rolex si è mantenuta nel vago anzichè addurre circostanze precise sul pregiudizio e/o sull’indebito vantaggio, previsti in dette disposizioni (basta quindi la prova di uno solo dei tre requisiti posti in alternativa -se si può dire così, dato che non sono due).
Punto importante. Stante la notorietà di Rolex, si potrebbe essere sorpresi, ma forse il T. ha visto giusto: non esiste in diritto il danno in re ipsa.
<< It must be borne in mind that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks 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 marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74). The more distinctive the earlier mark, the greater the likelihood of confusion and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18).
76 In the present case, it must be pointed out that, as has been held in paragraphs 22, 28, 33 and 34 above, the Board of Appeal was right in finding that the goods and services at issue were, in part, identical and, in part, similar. As has been stated in paragraphs 52 and 58 above, the Board of Appeal also found, without making any error of assessment, that the signs at issue were visually similar to an average degree and phonetically similar to a high degree. As regards the conceptual comparison of the signs at issue, as has been held in paragraph 67 above, that comparison is, for part of the relevant public, neutral, whereas, for another part of that public, those signs are conceptually similar to an average degree. In the light of the fact that the distinctiveness of the earlier mark is normal and the relevant public’s level of attention varies from average to high, and in the light of the interdependence between the similarity of the goods and services and the similarity of the marks, it must be held, in the context of a global assessment, that the Board of Appeal was right in finding that there was a likelihood of confusion.
77 In view of all of the foregoing considerations, the single plea must be rejected and, as a result, the action must be dismissed in its entirety>>.