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31 May 2021
BY Ilse du Plessis

Confusingly similar trade marks: what’s happening in Europe?

We tend to keep an eye on trade mark developments in Europe. It makes sense because South African trade mark law is very similar to EU trade mark law and there’s far more activity in the EU. South African courts do, of course, often consider EU trade mark judgments. Here are a few recent cases:

 

Rounded curves, thicker lines and a horizontal orientation…was the judge’s mind wandering a little?

This was an interesting one. It’s probably not often that a perfume house and a computer giant come into conflict, but they managed to do so in Europe. Huawei filed an application to register the logo that appears below left. The application was in class 9 and it covered a wide range of electronic goods including computer hardware.

Image source

 

Chanel filed an opposition to this application. The opposition was based on its logo (shown above right), and in particular, a French trade mark registration in class 9 in respect of roughly the same goods as Huawei’s application. Chanel also relied on a French registration for its logo mark covering totally unrelated goods (such as perfumes), coupled with a significant reputation. Chanel alleged that there was a likelihood of confusion between the marks. It also claimed that there would be dilution and unfair advantage that could be detrimental to the distinctive nature or repute of its mark.

The first hurdle, of course, was to establish that the marks are indeed similar. No easy task. Chanel claimed that there was a high degree of similarity between the two marks when Huawei’s mark was rotated by 90%. But was that a valid argument?

No, said the General Court, notional use of this nature does not come into the enquiry, one must simply consider the form in which marks appear on the Register. It’s not OK to rotate them: “The marks must be compared as applied for and registered, without altering their orientation.

The court went on to say that the two marks “share some similarities but their visual differences are significant.” It went on to explain: “In particular Chanel’s marks have more rounded curves, thicker lines and a horizontal orientation, whereas the orientation of the Huawei mark is vertical.”

There were, said the court, also conceptual differences. These related to the fact that, whereas Chanel’s mark evokes two letters C, Huawei’s mark evokes a letter H, or possibly two letters U. The court ended as follows: “Consequently the General Court concludes that the marks are different.”

It will be interesting to see whether Chanel seek to appeal this judgment to Europe’s highest court.

 

Our “mirroring” bottles

In Venice, they know a thing or two about glass. The Venice Court of Appeal, or as we international trade mark lawyers like to say, la corte d’appello di Venezia, has recently ruled in an interesting trade mark infringement case. This case involved an EU trade mark registration belonging to the Bottega winery for a three-dimensional shape mark. This comprises a wine bottle in a distinctive gold and pink colour combination, with the bulk of the bottle being gold except for the top which pink.

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The winery claimed that its trade mark registration had been infringed by a competitor, the winery Ca’di Rajo, which had also used gold colouring on a wine bottle, albeit a bottle that has a different shape and label to that of Bottega. The court ruled that the trade mark registration had been infringed, thus providing a good example of how colour can both function and be protected as a trade mark.

 

Image source

 

The owner of the Bottega winery said this after the judgment: “I expect that the competition now understands that le nostre bottiglie specchiate, our mirroring bottles, are unique and unmistakable.” Si, certamente!

 

El Clasico, something a little different, but still very topical

This will be of interest to football lovers. You obviously know that El Clasico is the unofficial name given to any match between Real Madrid and Barcelona. You’ll also know that these two teams were in the news recently, when it transpired that 15 of Europe’s top teams were seeking to form a break-away super league, a development that would have had a huge (possibly negative) impact on European football. It might also have resulted in meetings between the two Spanish giants becoming quite rare. The 15 clubs very quickly washed their hands of this when it became apparent that football fans were furious.

It now transpires that some enterprising type has applied to register El Clasico as an EU trade mark in class 41, the class that covers sporting and entertainment services. But the authorities have rejected this application on the basis of lack of distinctiveness, and an absence of proof of any commercial link between the applicant and the name. The reports on this are sketchy but it appears that the two clubs were themselves opposed to the application, although whether the application even reached the stage of formal opposition isn’t clear. Football’s reputation has taken something of a knock, but it will no doubt recover.

The decisions we’ve discussed here may one day prove to be influential in South Africa.

 

Ilse du Plessis

IP | Trade Mark Attorney | Executive

iduplessis@ENSafrica.com

+27 82 411 7547