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General Court considers trade mark confusion in the fashion industry

Amy Reynolds
02/11/2015
Wolverine International LP v Office for Harmonization in the Internal Market (Trade Marks and Designs) (2015) T-642/13SummaryThe General Court has made some useful observations regarding the nature of Wolverine International LP v Office for Harmonization in the Internal Market (Trade Marks and Designs) (2015) T-642/13

Summary

The General Court has made some useful observations regarding the nature of the fashion industry, and how confusion is more likely to occur when similar trade marks are used and registered by competing fashion businesses.

Background

Wolverine International, LP ("Wolverine") was the owner of a Community Trade Mark ("CTM") Registration for the following mark in relation to "clothing, footwear and headgear" in Class 25:

Cushe

BH Store BV ("BH") applied to invalidate Wolverine's registration, based on its earlier German registrations for the word mark SHE and SHE (stylised) which also covered Class 25.

OHIM's Cancellation Division initially rejected the invalidity application, on the basis that the marks were visually and phonetically similar to a low degree but not conceptually similar, and there was no likelihood of confusion.

BH successfully appealed. The Board of Appeal of OHIM found that the marks were phonetically identical and visually and conceptually similar, and there was a likelihood of confusion.

General Court Decision - similarity

The General Court confirmed the decision of the Board of Appeal, and of particular note was the commentary regarding the similarity of the marks.

Visually, the marks were considered similar. Although Wolverine argued that the figurative element at the beginning of the mark was a representation of the letters CU, the Court did not agree. Instead, the average consumer was likely to perceive this element as a stylised curved line rather than letters.

Phonetically, the marks were considered identical. Established case law dictates that figurative elements should not be taken into account when making a phonetic comparison, and therefore the relevant public would verbalise Wolverine's mark as SHE rather than CUSHE.

Conceptually, the marks were considered similar, since both contained the common word element SHE. The word SHE is part of basic English vocabulary meaning the third person feminine pronoun.

General Court Decision – confusion

When considering whether confusion between the marks was likely, the Court provided useful guidance regarding the fashion industry and the behaviour of its consumers.

Firstly, the clothing sector comprises goods which vary widely in terms of quality and price. Although consumers will usually be more attentive when purchasing an expensive garment, it cannot be assumed that this will be the case for all clothing items. Unless evidence is provided that the consumers in question are likely to have a high attention to detail, the relevant public will be deemed average consumers who are reasonably observant and circumspect.

Secondly, it is commonplace in the clothing sector for the same mark to be used in various ways, depending on the product. For example, fashion manufacturers and retailers often use sub-brands and diffusion lines which derive from a principal or house mark, and which share a common dominant word element. This means that when marks containing the same word element are used by different traders, there is a higher risk that the marks could be perceived by consumers as originating from the same source or being somehow related to each other.

Comment

This decision is a useful reminder that likelihood of confusion between similar marks can vary depending on the industry in question. For those in the fashion business, it is important to remember that there is a higher risk that similar marks will lead to confusion amongst consumers, due to the way in which brands are commonly used and understood in that sector.

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