Do you see a ‘G’, ‘X’, ‘3’, or ‘E’? This was one of the considerations of the EU General Court in dismissing Gucci’s appeals against the Board of Appeal’s decision not to allow its challenges to Guess?’s EU trade mark application and registration for ‘four interlocking capital letter G’s’.
Appeals in the EU General Court
Gucci filed a notice of opposition and applied to invalidate Guess?’s EU trade mark application and registration, based on its earlier trade marks for different versions of a ‘G’ next to or connected to another mirroring ‘G’. Gucci relied on the ground that Guess’s mark was identical or similar to its earlier trade marks and there was a likelihood of confusion by the public.
However, the Court held that the marks were not similar and they left a different visual impression. The Court stated that the average consumer rarely has the opportunity to compare the marks directly and would rely on memory. The average consumer ordinarily notices a mark as a whole (rather than considering its details) so Guess?’s trade mark would be perceived as an abstract figurative mark, rather than being noticeable for the combined ‘G’ letters. Furthermore, as the letters were connected, Guess’s mark instead could be perceived as stylised ‘X’s’ or ‘E’s’ or a combination of ‘3’ and ‘E’. The Court then analysed Gucci’s earlier trade marks. For example, whilst Guess’s mark was for four irregular connected semi-circles with the edges pointing in different ways, some of Gucci’s marks only had two elements and were regular and circular shapes, one mark had two separate (rather than connected) ‘G’s’, one mark was made up of five elements, and one mark would be seen more as a cross pattern.
Just as the Board of Appeal had held earlier, using a letter to make up a figurative mark does not itself mean that a competitor using the same letter as part of its figurative mark will have a similar mark, as there are various different ways to represent a letter. Gucci had also argued that the Board of Appeal should have considered the separate ground that Guess’s mark was identical or similar to Gucci’s earlier marks, Gucci’s marks had a reputation, and Guess’s mark took unfair advantage of, or was detrimental to, the distinctiveness or reputation of Gucci’s earlier marks. However, the Court stated that it did not have to consider this ground in more detail as it had fallen at the first hurdle, as it had already found that the marks were not similar. It would only have to go on to consider this ground if there had been at least a very weak similarity.
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