April 1, 2019
The Queen bee of influencers, Chiara Ferragni, and her business partners have prevailed in overturning the European Intellectual Property Office’s (EUIPO) decision that their application to register the mark:
(“the Chiara Eye mark”)
was confusingly similar to a Benelux trade mark for the word “Chiara” for goods in class 25 (which covers clothing, footwear and headgear items).
Chiara Ferragni shot to fame via her fashion blog The Blonde Salad. She currently has over 16 million Instagram followers. It is thought that she receives approximately $20,000 per sponsored post and she has appeared on the front covers of over 50 fashion magazines.
In 2015, Ferragni (via the Italian company Serendipity SRL she is a member of) applied to the European Intellectual Property Office (‘EUIPO’) to register the Chiara Eye mark as a trade mark for a number of goods, including those in international classification classes 18 and 25 for items such as bags, leather purses and clothing.
The Dutch owners of a Benelux trade mark for the word ‘Chiara’ registered for goods in Class 25 relating to clothing filed an opposition to the application for the Chiara Eye mark on the grounds that there was a likelihood of confusion between the Chiara Eye mark applied for and their earlier Benelux trade mark for Chiara.
In 2017 the EUIPO refused Serendipity SRL’s application for the Chiara Eye mark for items such as bags, haversacks and leather purses in class 18 and all of the goods applied for in class 25, citing a likelihood of confusion with the earlier Benelux mark for the word ‘Chiara’.
This decision was appealed by the owners of the Chiara Eye mark to the General Court of the European Union, who disagreed with the EUIPO’s decision and noted the following:
1) “The average consumer perceives a mark as a whole and the [Chiara Eye mark] applied for is a composite mark … [comprised] of both word and figurative elements. It is, in fact, composed of two word elements, ‘chiara’ and ‘ferragni’ in balck capital letters, with the letter ‘I’ in bold, and a figurative element, positioned above the word elements, consisting of a drawing representing a sky blue eye with long lashes. Those long lashes look like the letter ‘I’ in the words ‘chiara’ and ‘ferragni’.
2) “The highly stylized nature, colour, position and size of the figurative element are likely to divert the relevant public’s attention away from the word element, which is positioned in the lower part of the mark applied for”.
3) They summarised that the figurative element of the Chiara Eye mark is at least as distinctive as “the word elements of the mark taken as a whole. Accordingly, the EUIPO was wrong to attach greater importance to the word element ‘chiara’ than to the figurative element.”
4) Carrying out the usual test regarding visual, phonetic and conceptual similarity the court found:
· The ‘chiara’ (word) mark and the Chiara Eye mark are only visually similar to a slight degree as “although the earlier word mark ‘chiara’ is entirely reproduced in the word elements of the mark applied for, ‘chiara ferragni’, the figurative element of the latter has a significant impact in the overall visual impression.”
· “The distinguishing feature, ‘ferragni’, given its length is phonetically more important than the similar element, ‘chiara’.” Accordingly, the ‘chiara’ (word) mark and the Chiara Eye mark have “an ‘average’ or even ‘slight’ phonetic similarity.”
· Conceptually, the two marks are different “since the [Chiara Eye mark] … identifies a specific person, while the earlier word [‘chiara’] mark merely refers to a first name, without identifying a specific person.”
On the basis of the factors set out above the General Court found that despite the relevant goods being identical or similar, that the differences between the two marks, particularly the visual differences, were sufficient to “rule out any likelihood of confusion on the part of the public.” The court also noted that “as the goods in question are generally sold in self-service stores where decisions to purchase are mainly based on visual criteria, the differences between the two marks mean that consumers will not think that the goods come from the same undertaking or economically-linked undertakings when they bear the marks at issue.” Accordingly, the General Court found that the EUIPO were wrong or “erred” in finding that there was a likelihood of confusion
Overcoming obstacles to gain trade mark protection when there a tween trade marks depends on a variety of different factors. If you are keen to protect a particular trade mark but are concerned about other potentially similar trade mark registrations then adopting an informed strategy is advisable.
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