Who: Giovanni Cosmetics, Inc v OHIM
Where: General Court of the CJEU
When: 3 June 2015
Law stated as at: 29 June 2015
What happened:
Giovanni Cosmetics Inc (Giovanni) owns the CTM for the word mark GIOVANNI and opposed a CTM application for the logo (below) filed by Vasoncelos & Goncalves, S.A.
Both the application and the earlier mark covered the same goods: products in class 3.
Giovanni opposed the application but their opposition failed before the Opposition Division.
Giovanni subsequently appealed that decision but the Second Board of Appeal dismissed the appeal. It held that the word element of the logo would be perceived by the public as an Italian first name followed by a surname, that the surname “Galli” was more distinctive than the first name, and that surnames as a general rule, were more distinctive than first names. Therefore there was no realistic likelihood of confusion between the marks and the opposition should fail.
Giovanni again appealed on the basis that the Board was wrong to conclude that there was no likelihood of confusion between the marks under Article 8(1)(b) of Regulation 207/2009.
The General Court considered that the level of the average consumer’s level of attention when purchasing cosmetic preparations, was “average.”
The Court agreed with the Board that the goods in questions were partly identical and partly similar. The Court found that the figurative element of the mark was as important as the combined word elements of that mark. However the Court found that case law has not established the principle that surnames are more distinctive than first names.
The Court agreed with the Board that the visual similarity between the marks was low due to the figurative element of the mark applied for and that in respect of aural similarity, this was average.
On a global assessment of the likelihood of confusion, therefore, the court held that the fact that the marks shared the same forename could not lead to the conclusion that the relevant public would confuse the marks.
Why this matters:
This case has clarified that as a principle, surnames don’t have a higher level of distinctiveness than first names. This is, unless the surname in question is recognised as a rare surname in a particular jurisdiction, in which case it will have greater distinctiveness.
