L’uso di marchio leggermente modificato salva quello registrato dalla decadenza per non uso

Il Trib. UE 24.01.2024, T-562/22, Noah Clothing c. EUIPO-Yannick Noah, offre un esempio di applicazione dell’art. 18.1.a), reg. 2017/1001  (“sono inoltre considerate come uso: a) l’utilizzazione del marchio UE in una forma che si differenzia per taluni elementi che non alterano il carattere distintivo del marchio nella forma in cui esso è stato registrato”).

Marchio registrato:

marchio usato nei fatti:

Per il Trib. il secondo è poco diverso dal primo, per cui lo salva dalla decadenza.

<<61  In that regard, first, the upper-case letter ‘Y’ followed by a full stop before the word ‘noah’ constitutes a repetition of an element already present in the figurative element of the mark at issue, which is described by its proprietor as consisting, inter alia, of an upper-case letter ‘Y’ in black. Secondly, that letter is placed below the figurative element, which dominates the overall impression both of the mark as registered, in conjunction with the word ‘noah’, and the modified mark, with the result that, although it is not negligible, it occupies a secondary position in the perception of that mark.

62 In addition, the use of signs consisting of surnames is common in the clothing sector (judgment of 20 February 2013, Caventa v OHIM – Anson’s Herrenhaus (B BERG), T‑631/11, not published, EU:T:2013:85, paragraph 64). Therefore, as regards the conceptual meaning of the mark at issue, the word element ‘noah’ may be perceived, both in the registered form and the modified form, as a surname that refers to a specific person, namely the intervener.

63 In any event, the applicant itself acknowledges, in paragraph 56 of the application, that the word element ‘noah’, as it appears in the registered form and in the modified form of the mark at issue, may be perceived as a surname.

64 Lastly, it must be noted, as EUIPO did, that the addition of the first letter of the given name merely reinforces the reference to the intervener.

65 Consequently, it must be held that the mark at issue in its form used in the course of trade may be regarded as broadly equivalent to the mark at issue as registered, since the added element consisting of the upper-case letter ‘Y’ followed by a full stop is neither distinctive nor dominant in the configuration of the modified mark. In those circumstances, such an element cannot be perceived by the relevant public as capable of altering the distinctive character of the mark at issue>>.