A butterfly is not conceptually similar to a bird, says EUIPO

 

Italian fashion company Cris Conf S.p.A. owns a figurative trade mark depicting two birds on a ring. It opposed an application for identical goods depicting a butterfly on a ring. By decision dated 11 January 2024 (available only in the original version in Italian) the EUIPO’s Opposition Division rejected the opposition since the mere association with an animal species is not sufficient to evoke conceptual similarity.

Facts of the case

On 29 April 2022, the Italian company Passaggio Obbligato S.p.A. filed an application for the figurative EU trade mark no. 018695865 for classes 18 and 25. The trade mark consists of a double circular line on the upper portion of which is a stylized butterfly:

Relying on a likelihood of confusion  pursuant to Art. 8(1)(b) EUTMR and on protection of a trade mark with a reputation according to Art. 8(5) EUTMR, Italian fashion company Cris Conf S.p.A. (the opponent), mostly known as Pinko, filed an opposition based on two earlier figurative trade mark registrations (the Italian trade mark no.  2017000128845 and the International trade mark registration no. 1419699 designating the EU) consisting of a double circular line on the upper portion of which are posed two stylized birds, with open wings and veins evoking plumage, arranged symmetrically with their respective beaks joined together. Both trade marks cover classes 18, 25 and 35.

The decision

The EUIPO, presuming that the contested goods and services were identical to those of the earlier trade marks, considered that the relevant public has a medium level of attention and that the relevant territories are Italy and the EU.

As regards the visual comparison, the EUIPO held that the signs under comparison only visually coincide in the double circular line, which lacks distinctiveness it being a simple geometric figure and does not even convey any semantic content, given that the figures of the bird and the butterfly different and to be considered normally distinctive as they bear no relation to the goods and services in question.

As regards the conceptual comparison, the EUIPO concluded that the signs are dissimilar since they will be associated with different meanings conveyed by the bird and the butterfly, respectively. In fact, merely belonging to the animal species is in no way sufficient to evoke a conceptual similarity.

The opponent argued that the earlier trade marks possess a high degree of distinctiveness as a result of their longstanding and intensive use and that the earlier International trade mark has a reputation in the EU for goods in classes 18 and 25.

The EUIPO considered that all the evidence provided by the opponent (i) mainly refer to the trade mark Pinko (as the figurative sign at issue was mostly used as a clasp), (ii) were coming largely from the same opponent and (iii) did not provide sufficient information on the market share of the earlier trade mark, the extent of the investments made to promote said trade mark and the degree of awareness by the relevant public. Therefore, the earlier trade mark has been proved neither to be distinctive nor to have a reputation.

Comment

The decision reasonably states that the mere belonging to an animal species is not sufficient to evoke conceptual similarity.  The mere fact that two signs can be grouped together under a common generic term does not make them automatically conceptually similar either.

Moving from animals to fruits, it is worth recalling the decision of the General Court (GC) in T-215/17 related to figurative trade marks representing a pear and an apple (IPKat here). The GC found that, although an apple and a pear may have common characteristics, since both are fruits closely related to each other in biological terms and similar in size, colour, texture, those common characteristics have very little impact on the overall impression. Consequently, these elements are insufficient to counterbalance the obvious conceptual differences between the two signs and make them conceptually similar.

 

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