Trade marking single letters – Fashion brands fight over P & G
This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.
The EU General Court has issued three decisions this week relating to stylised trade marks incorporating letters owned by fashion brands. The decisions provide interesting examples of how registrations of stylised letters are perceived and the breadth of the protection they afford.
On 11 October 2016, the General Court issued two related decisions involving a dispute between the fashion brands Gucci and Guess (Guccio Gucci SpA v EUIPO, Cases T-461/15 and T-753/15). The dispute saw Gucci attack Guess's existing EU registration and application for the following logo consisting of interlocking Gs:
Gucci sought to invalidate Guess's registration and block its application on the basis of Gucci's earlier rights in five different logos incorporating the letter G:
Gucci argued that Guess's logo was confusingly similar to all of its earlier G logo marks. Gucci also claimed to have a reputation in its marks and that it owned a family of 'G' marks. The General Court rejected Gucci's claims and allowed Guess's trade marks.
The General Court confirmed the Board of Appeal's assessment of Guess's mark as a complex symmetrical pattern of four opposed and criss-crossed elements, rather than as interlocking Gs. The Court also confirmed the Board of Appeal's view that if the public were to perceive Guess's mark as incorporating the letter 'G' at all, the mark would be seen as a combination of four highly stylised letters in different positions, with none being in the normal upright position and, as such, forming a very specific and complex graphic design. In contrast, Gucci's marks would be seen as a normal upright letter 'G', along with its mirror image (either interlocked with or adjacent to the first 'G').
The General Court stated that the public "will not perceive in [Guess's] mark the capital letter 'G', represented by the earlier marks, but rather an abstract ornamental motif". The Court even went on to state that Guess's logo "could be perceived both as reproducing stylised letters, such as the capital letter 'X' or the letter 'e', and as a combination of figures and letters, such as the figure '3' and the letter 'e'". Gucci's marks were deemed to consist of the capital letter 'G' and a backwards capital 'G', with an overall impression "more like rings or the links in a chain".
The General Court held that "the marks at issue create a different visual impression" and are completely different overall. Even if it could be shown that all of the logos were originally based on the letter 'G', this was not sufficient to find them similar.
As the Court held the marks to be completely dissimilar, it did not even consider the distinctiveness or reputation of Gucci's earlier marks or the fact that Gucci owns a family of marks incorporating the letter 'G'.
On the same day as issuing the Gucci/Guess decisions, the General Court also issued its decision in an appeal relating to a dispute centred on the letter 'p', involving the fashion brand Perry Ellis (a menswear brand owned by the same group as Penguin and Farah) and the cycling brand Protective, sold through Germany-based company Thaler Sports (Perry Ellis International Group Holdings Ltd v EUIPO, Case T-350/15).
This dispute was an appeal in relation to an opposition against Perry Ellis's application to register the following logo as an EU trade mark:
The opposition was based on the German company's earlier national rights in the following logos:
The General Court confirmed the Board of Appeal's decision that there was a likelihood of confusion between Perry Ellis's application and the earlier mark shown on the far left. As such it refused Perry Ellis's trade mark application.
The General Court ruled that the Board of Appeal had been correct in its finding that the relevant public would perceive the marks as the letter 'p' and, as such, visually similar to an average degree and phonetically identical.
The contested mark includes a curved line or arc, which was argued could be seen as a capital 'D'. However, the General Court confirmed the Board of Appeal's finding that the letter 'p' was dominant and that this arc was purely decorative. The dissimilarities such as the more angular typeface of the Perry Ellis mark did not outweigh the similarities. Both marks were perceived as an italicised lower case letter 'p'.
The Court rejected Perry Ellis's argument that the earlier mark was weak and went on to confirm the Board of Appeal's finding that there was a likelihood of confusion between the contested mark and the earlier German logo.
These decisions seem to boil down to whether marks are seen as consisting solely of a letter. The more complex the logo, the less likely it will be seen as just a letter. It is difficult to accept the Court's finding that Guess's logo is not comprised of interlocking Gs, but rather a purely ornamental design, particularly given the owner's name Guess. However, the logo is undoubtedly more complex than the Perry Ellis mark. These decisions give us an indication of the limits on rights in stylised single letters. It seems rights holders can prevent later marks in a similar font with minimal ornamentation, but will struggle when faced with more complex logos that can be perceived as consisting of letters or as a decorative design in their own right.
