N is for no

27th Apr 2020

Eleni Mezulanik puzzles out why a mark received partial registration. B 2 858 879, SSC NAPOLI SpA v Aicha Oucheikh, EUIPO, 28th January 2020

hands saying no

SSC NAPOLI SpA (the Opponent) filed an opposition against EUTM Application No. 016046583 in classes 18, 25 and 35 against all goods/services in the name of Aicha Oucheikh (the Applicant).

n in circle
Italian trade mark registration no.1140263

The opposition was based on Italian Trade Mark Registration No. 1449489 (the First Mark); Italian Trade Mark Registration No. 1140263 (the Second Mark); and IR No. 992435, designating protection in the EU (the Third Mark).

The goods and services relevant to the marks at issue were found to be identical or similar (to varying degrees) and were directed at the public at large for classes 18 and 25 and at the professional public with specific knowledge and experience for some of the services in class 35.

Comparing the contested mark to the First and Second Mark, no elements could be considered clearly dominant, although all marks share the single letter “N”. The First Mark was held to be visually similar to an average degree and the Second Mark was held to be visually similar to a low degree to the contested mark. Aurally and conceptually, the contested mark was held to be identical to the First and Second Mark.

n in circle
EUTM application no.016046583

The Opponent claimed reputation in relation to “clothing, footwear and headgear” in class 25 and “sporting activities” in class 41. The evidence as filed did not demonstrate that the First Mark had acquired an enhanced degree of distinctiveness or reputation through use. However, the Second Mark had been used consistently and intensively together with the names ‘SSC Napoli’ or ‘Napoli’. Such use showed that the Second Mark enjoyed a high degree of recognition among the relevant public. Nonetheless, the evidence succeeded in showing only that the Second Mark had acquired a reputation for “sporting activities” in class 41 and not all goods/services.

n in circle
Italian trade mark registration no.1449489

It was held that the First Mark had an average degree of distinctiveness and that the Second Mark had acquired a reputation in class 41 and had a normal degree of distinctiveness in relation to the remaining goods/services. There was a likelihood of confusion on the part of the public, and the opposition was partly well founded on the basis of the First Mark. As such, the contested mark could have been rejected for the goods found to be identical/similar.

However, it was held that the “considerable differences” in the colour arrangement and double rings of the Second Mark would enable the relevant public to distinguish the marks, even for identical and similar goods. The Third Mark was held not to be confusingly similar to the contested mark as it contained verbal elements in addition to those of the Second Mark.

n in circle

With regard to reputation, it was held that “sporting activities” and “clerical services” were different, and it would be unlikely that the relevant public would make a mental link between the contested mark and the Second Mark. Further, the contested trade mark was likely to take unfair advantage of the distinctive character or the repute of the earlier mark. The contested mark was therefore rejected for all goods/services with the exception of “clerical services”.

Key points

  • According to the General Court, a single letter or numeral may be inherently distinctive. Only when the later trade mark causes a sufficiently different visual impression can a likelihood of confusion be safely ruled out
  • Absence of any of the three requirements of Article 8(5) EUTMR (identicality/similarity, prior reputation, risk of injury) will lead to the rejection of the opposition
  • Even if the requirements are fulfilled, an opposition may still fail if the applicant establishes due cause for the use of the contested trade mark