Reaching for the moon
Prior rights did not hold up, reports Paul Hegedus. 000015250 C, LUNA SPLENDIDA (Invalidity), EUIPO, 26th June 2019.
000015250 C, LUNA SPLENDIDA (Invalidity), EUIPO, 26th June 2019
These EU Registry proceedings involved the filing of a declaration of invalidity by Luna AE (the Applicant), a Greek company, against all the goods in classes 24 (textiles) and 25 (various clothing items) of Luna Italia SRL’s (the Registrant) EUTM registration No 16308108. The invalidity action was based on the Applicant’s prior rights in its mark (covering various undergarment-type goods in class 25), the subject of EUTM registration No 9773896.
It was argued by the Applicant that the Registrant’s mark should never have proceeded to registration and accordingly should be declared invalid by virtue of Article 60(1)(a) EUTMR:
by virtue of covering the same or similar goods; and
the signs being similar (as they contained the identical verbal element “LUNA” and a low level of stylisation).
Proof of use
During the substantive proceedings, the Registrant had requested the Applicant provide proof of use of its mark, asserting that the mark relied upon in the proceedings was more than five years old. However, the Cancellation Division (CD) confirmed that the relevant date in cancellation proceedings is not the date of filing the contested EUTM (as it is in opposition proceedings) but the date of the cancellation request. Therefore, the request for proof of use was found to be inadmissible.
Similarity of marks
In assessing the similarity of marks, the CD commented that overall the signs coincide with the word LUNA, which is the only distinctive verbal element. The additional word in the Registrant’s mark – SPLENDIDA – is a laudatory term and the figurative elements play only a secondary role in the assessment of likelihood of confusion. All in all, the marks were held to be visually similar to an average degree and aurally and conceptually similar to a high degree (given both associations with the moon).
In assessing each of the goods, the majority of the class 25 clothing items in the Registrant’s specification were held to be identical or at least similar to the Applicant’s earlier undergarment goods. However, various forms of headwear and footwear were held to be dissimilar. The CD stated: “footwear, headgear and underwear are not usually sold close to each other in the same department and companies producing footwear and headgear rarely (if ever) produce underwear and vice versa”. Further, all of the Registrant’s class 24 goods were held to be dissimilar.
Considering all of the relevant circumstances, including the relevant degree of public attention as being average/moderate, the CD ordered the Registrant’s mark to be declared invalid in respect of those goods that were similar and identical to the Applicant’s earlier mark. After reviewing all of the Applicant’s evidence, the CD came to the conclusion that the evidence did not demonstrate that the Applicant’s mark had acquired a reputation in Greece and Italy, as originally claimed. Thus, the Applicant’s claim under Article 8(5) was dismissed.
- For industries in which the level of consumer attention is average/moderate (and not high), trade mark owners can expect the EUIPO to apply a lower threshold when assessing similarity of marks
Paul Hegedus is a Senior Associate at Lewis Silkin
ASSOCIATE, Lewis Silkin LLP