GIORGIO ARMANI S.p.A., Milan, Swiss Branch Mendrisio v. NARUMI TRADING CO., LTD.

GIORGIO ARMANI S.p.A., Milan, Swiss Branch Mendrisio

Case details

Plaintiff: GIORGIO ARMANI S.p.A., Milan, Swiss Branch Mendrisio

Defendant: NARUMI TRADING CO., LTD.

Case no.: R1431/2011-2

Jurisdiction: European Union

Industry: Fashion

Decision date: 28 Jun, 2012

Subject matter: Identity of goods and servicesLikelihood of confusionPhonetic similarityReasons of equitySimilarity of the signsVisual similarity

Decision

The signs are identical to the extent that both contain the same sequence of letters ‘ARM at the beginnings of the signs, and the same letter ‘N in fifth place. The BoA finds that the different endings of the signs at issue are not enough to offset, from the consumers point of view, the visual and phonetic identity of the root ‘arm. The conflicting signs converge on a number of crucial points. They cover identical goods. They are visually and phonetically similar overall. Moreover, the similarities are not counteracted by any clear conceptual differences between the signs. The Board considers that the public might believe that those goods come from the same undertaking or, as the case may be, from economically-linked undertakings. The question of whether the opposition had actually been substantiated was not decided upon in the contested decision due to the fact that the Opposition Division found that Article 8(1)(b) CTMR did not apply in any case, due to the dissimilarity of the marks. However, as concluded above, the Board has found that the comparison of the goods and the marks in question does, in fact, lead to a likelihood of confusion. Therefore the question of whether the earlier mark has been genuinely used must be decided upon first, before going on to decide whether or not the opposition is ultimately successful. The contested decision is annulled and the case remitted to the Opposition Division in order to re-assess the validity of the opposition.

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Comparison of Trademarks

ARMANI

ARMEN

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