Confondibilità tra marchi figurativi

Marchio chiesto in registrazione (per elettronica e gaming digitale):

Anteriorità opposta (per prodotti parzialment simili):

Il Tribunale UE 19.04.2023, T-491/22, Zitro International Sàrl c. EUIPO-a-gaming s.r.o., conferma l’appello amministrativo nel senso che non c’è confondibilità

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>>.

Come condurre il giudizio di contraffazione tra due marchi, uno denominativo e l’altro figurativo/denominativo (con parola capovolta)

Trib. UE 01.06.2022 , T-363/20 , PAo Moskow v. EUIPO, giudica della confondibilità trea i seguenti due marchi (per prodotti uguali: dolciumi):

marchio posteriore, oggetto di contestazione
marchio anteriore, azionato dall’impugnante

* * *

Interessa sopratutto la parte relativa alla ravvisabilità o meno di una componente predominante (evidentemente nel marchio sub iudice), che precede il consueto giudizio sulla somigliana visuale, fonetica econcettuale (a  § 74 ss)

Il T. conferma il giudizio amministrativo per cui non può ravvisari una componente dominante.

Il punto pià interenssante è l’elemento denominativo <krowka> alll’interno della figura e la sua collocazione rovesciata che ne riduce la leggibilità:

<< 55   Second, it must be held that the Board of Appeal did not make an error of assessment in finding that the contested mark did not contain any element which was more visually eye-catching than others. More specifically, it was justified in finding that, contrary to the applicant’s contentions, the element ‘krówka’, positioned upside down in the rectangle situated in the upper part of that mark, did not constitute a dominant element of that mark.

56      In that regard, first of all, it should be noted that the applicant misinterprets the contested decision in so far as it submits that the Board of Appeal found that the element ‘krówka’ will not be perceived by the relevant public, whereas the Board of Appeal merely noted, in paragraph 31 of the contested decision, that that public will have difficulty in perceiving and reading that element, without, however, taking the view that it was negligible.

57      In any event, that finding of the Board of Appeal can only be upheld. As the Board of Appeal correctly stated in paragraph 31 of the contested decision, consumers in the European Union usually read from left to right, and not from right to left, reversing the letters. It cannot therefore be disputed that, in the light of the way in which it is represented in the contested mark, the element ‘krówka’, even if it cannot be described as illegible, will not be immediately identified by the relevant public, that is to say, without a certain mental effort on its part. That public will have even greater difficulty reading that element because it does not proceed to analyse the various details of the mark when making a purchase (see, to that effect, judgment of 11 November 2009, Frag Comercio Internacional v OHIM – Tinkerbell Modas (GREEN by missako), T‑162/08, not published, EU:T:2009:432, paragraph 43). As EUIPO correctly observes, that would be all the more true in the situation, defended by the applicant, where the relevant public has only a low level of attention.

58      The two reviews produced by the applicant during the proceedings before the Board of Appeal, which establish that consumers are able to recognise words written upside down, are not such as to call into question the considerations set out in paragraphs 55 to 57 above. As the Board of Appeal correctly pointed out in paragraph 32 of the contested decision, the hypotheses covered by those reviews can be distinguished from the circumstances of the present case, in which the element ‘krówka’, represented upside down, is preceded by another word, also represented upside down, and those two elements will be perceived by the relevant public as being invented words and in which they are followed by the expression ‘milk fudge’ written upright, which, for its part, is easily legible.

59      In short, the element ‘krówka’ is only one of the non-negligible elements which make up the contested mark. Even if the attention of the relevant public were to be drawn more by the word elements of that mark, this would be more by the expression ‘milk fudge’ than by the element ‘krówka’, if only because the two elements making up that expression are not upside down. In addition, the element ‘krówka’ is not isolated, but is preceded by the element ‘mleczna’, which is also represented upside down.

60      Next, it is to no avail that the applicant relies on the fact that the contested mark could also be viewed when turned upside down. In that regard, it should be borne in mind that, when assessing whether they are identical or similar, signs must be compared in the form in which they are protected, that is to say, as they were registered or as they appear in the application for registration. The actual or potential use of registered marks in another form is irrelevant when comparing signs (judgment of 21 April 2021, Chanel v EUIPO – Huawei Technologies (Representation of a circle containing two interlaced curves), T‑44/20, not published, EU:T:2021:207, paragraph 25).

61      The orientation of signs, as set out in the application for registration, may have an impact on the scope of their protection and, consequently, in order to avoid any uncertainty and doubt, the comparison between the signs can be carried out only on the basis of the shapes and orientations in which those signs are registered or applied for (judgment of 21 April 2021, Representation of a circle containing two interlaced curves, T‑44/20, not published, EU:T:2021:207, paragraph 26).

62      Lastly, as EUIPO correctly submits, it is irrelevant that, in EUIPO’s register, the contested mark is described as containing the element ‘krówka’, given that that register will not be consulted by the relevant public>>

Marchio rinomato cede a marchio anteriore non rinomato

il Trib UE decide l’opposiizone alla registazione di mrachio da prate del Ac Milan: Trib. Ue 10.11.2021, T-353/20, aC Milan spa c. EUIPO. L’oppositore è titolare di marchio denominativo <Milan> del 1984, § 53, mentre il deposito di marchio figurativo (§ 2) dell’AC Milano è del 2o17.

I prodotti o servizi sono quasi identici (penne, carte, quaderni e materiali di cancelleria) , per cui la lite si giuoca sulla somiglianza tra marchi.

Centrale è , comprensibilmente, il giudizio sulla preminenza o meno del segno figurativo nei due marchi. Contraraumetne a quanto di solito si ritiene, qui non lo è per il marhcio anteriore, date laa sua ridotta evidenza, § 57 ss.

Analoga preminenza anche per il segno del depositante AC Milan, § 84 ss.

Pertanto la somiglianza tra segni è quasi scontata.

La soc. del team calcistico perde dunque sia la fase amminsitrativa sia il primo grado giudiziale.

Ricordo solo due aspetti:

  1. le iniziali considerazioni generali, slegate dal (ma poi applicate al) caso de quo:

    << In interpreting the concept of genuine use, account must be taken of the fact that the ratio legis for the requirement that the earlier mark must have been put to genuine use is not intended to assess the commercial success or control the economic strategy of an undertaking or to restrict the protection of marks only to their quantitatively significant commercial exploitation (judgments of 8 July 2004, T‑203/02, Sunrider v OHIM – Espadafor Caba(VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 38, and of 2 February 2016, Benelli Q. J. v OHMI – Demharter (MOTOBI B PESARO), T‑171/13, EU:T:2016:54, paragraph 68). A trade mark is put to genuine use when it is used, in accordance with its essential function of guaranteeing the identity of origin of the goods or services for which it is registered, in order to create or maintain an outlet for those goods or services, to the exclusion of uses of a symbolic nature the sole purpose of which is to maintain the rights conferred by the trade mark (see judgment of 8 June 2017, W. F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 37 and the case-law cited).

    24      In order to examine, in a particular case, the genuineness of the use of an earlier mark, an overall assessment must be made, taking into account all the relevant factors of the case. That assessment implies a certain interdependence between the factors taken into account. Therefore, a low volume of goods marketed under that mark may be offset by a high intensity or consistency of use of that mark over time, and vice versa. Furthermore, the turnover achieved and the quantity of sales of goods under the earlier mark cannot be assessed in absolute terms, but must be assessed in relation to other relevant factors, such as the volume of commercial activity, the production or marketing capacities or the degree of diversification of the undertaking exploiting the mark and the characteristics of the goods or services on the market concerned (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited).

    25      Moreover, genuine use of a trade mark cannot be demonstrated by probabilities or presumptions, but must be based on concrete and objective elements which prove actual and sufficient use of the trade mark on the relevant market (see judgments of 16 June 2015, Polytetra v OHIM – EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 47 and the case-law cited, and of 9 September 2015, Inditex v OHIM – Ansell (ZARA), T‑584/14, not published, EU:T:2015:604, paragraph 19 and the case-law cited).

    26      Genuine use of the trade mark presupposes that it is used publicly and externally, and not only within the undertaking concerned (see, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37). However, external use of a trade mark is not necessarily equivalent to use directed towards final consumers. Actual use of the mark relates to the market in which the proprietor of the mark carries on business and in which he or she hopes to exploit his or her mark. Thus, to consider that the external use of a trade mark, within the meaning of the case-law, necessarily consists of use directed towards final consumers would be tantamount to excluding trade marks used solely in business-to-business relationships from the protection of Regulation No 207/2009. The relevant public to which trade marks are intended to be directed does not include only final consumers, but also specialists, industrial customers and other professional users (see judgment of 7 July 2016, Fruit of the Loom v EUIPO – Takko (FRUIT), T‑431/15, not published, EU:T:2016:395, paragraph 49 and the case-law cited)>>.

  2. i fatti dedotti dallopponente per provare il suo <uso effettivo>, § 29:

    –     an undated affidavit from its Managing Director certifying annual turnover figures for the period 2010 to 2016;

    –        advertising material in German (numerous copies of catalogues and leaflets) dating from 2009 to 2014 for goods bearing the earlier mark;

    –        a copy of 43 invoices issued in the period between 2008 and 2014, addressed to various customers in Germany;

    –        documents concerning turnover and sales figures, dating from the years 2008 to 2016;

    –        price lists from 2008 to 2014 showing the suppliers of the products of the other party to the proceedings before the Board of Appeal.

Non si discute della validità del marchio anteriore, che potrebbe a sua volta essere stato anticipato dall’uso di fatto (non dalla registrazione, suppontgo, interventua appunto nel 2017) del segno da aprte del team calcistico.

Probabilmente difettava l’affinità merceologica, essendo assai discutibile che possa essere superata dalla rinomanza qualora non vi sia registrazione ma appunto solo uso di fatto.