What are the key considerations for fashion trade marks?
Is there a likelihood of confusion between the figurative signs pictured below (PANTHÉ and PANTHER) for “Clothing; Headgear” in Class 25? The EU General Court said "No". In doing so, they upheld a decision of the EUIPO Board of Appeal. The case is El Corte Inglés v EUIPO/MKR Design Srl (Case T-117/20). The judgment was published on 10 February 2021.
So what happened? Spanish retailer El Corte Inglés opposed an EUTM application for the sign listed above (PANTHÉ) which was filed by MKR Design. The opposition was based on the Spanish word mark PANTHER as well as Spanish and EU figurative marks (the EU mark is pictured below).
The General Court agreed with the Board of Appeal that the marks were visually dissimilar, phonetically similar to a high degree for consumers who were able to identify the word “panther” in the earlier marks, and conceptually different.
A significant factor in reaching this assessment and consequently the overall conclusion that there was a lack of confusion was the observation that “generally in clothes shops customers can either themselves choose the clothes they wish to buy or be assisted by sales staff. Whilst oral communication in respect of the goods and the trade mark is not excluded, the choice of the item of clothing is generally made visually”. Therefore, the General Court said the visual perception will generally take place prior to purchase and the visual aspect plays a greater role in the global assessment of the likelihood of confusion for clothes and, arguably, related fashion products.
In this case, the lack of conceptual and visual similarity between the signs was capable of counteracting the phonetic similarity.
El Corte Inglés had also challenged the Board’s finding that its evidence of genuine use of the word mark PANTHER was insufficient. But the Court said the company did not state why the Board erred in finding it insufficient, so this plea was inadmissible.