EUIPO says comparing virtual goods to real-life goods like apples and oranges

In a recent decision (No B3199946) on comparing virtual and real-world goods and services for the purposes of oppositions, the Opposition Division of the EU Intellectual Property Office (EUIPO) refused to extend a finding of similarity between goods/services in class 35 to the same goods/services when applied to the virtual reality.   

Background

Vinicio SRL (Vinicio), an Italian department store specialising in luxury fashion brands, filed an application (the Application) to register the following figurative mark (the Mark) as an EU trade mark (EUTM) in a number of classes, including classes 3 and 35 in respect of (summarily) soaps, perfumery essential oils, cosmetics and lotions, as well as retail services for the same: 

The class 35 specification for the Application included the following: "retail services in relation to: virtual goods, namely soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, beauty and care preparations for the body, deodorants, joss sticks, pot-pourri and bags, kits and gift sets containing skin, hair and/or nail care preparations, the aforesaid goods for use in virtual reality."

 

In July 2023, Artessence FZC (Artessence) a UAE-based company, filed an a notice of opposition in respect of the Application (the Opposition) on the basis of its EUTM (the Registration) for the figurative mark shown below, which had been registered for goods in class 3 (perfumery, cosmetics) and class 4 (candles and perfumed candles):

 

 

The Opposition was based on Article 8(1)(b) of the EU Trade Mark Regulation 2017/1001 (EUTMR), namely that an application to register an EUTM will be refused where the mark applied for is identical or similar to an earlier trade mark and there is exists a likelihood of confusion.

The Opposition Division's ruling

The Opposition Division began by noting that whether a likelihood of confusion exists depends on a global assessment of several factors, including the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, and the relevant public.

 

Similarity in goods/services

 

Beginning with the similarity in goods and services, the Opposition Division noted that some of the wording in the Application's specifications included the terms "that is" and "namely" (for example in respect of the virtual goods/services referenced above), which were intended to restrict the scope of the protection only to the goods/services specifically listed rather than the broader category.

 

Also, pursuant to Article 33(7) EUTMR, the fact that goods or services are in the same or different classes does not in itself denote that they are similar or dissimilar.

For class 3, the Opposition Division found that the goods and services in the Registration and the Application were either identical (cosmetics), similar (dentifrices), or similar to a high degree (kits and gift sets).

 

For class 35, the main issue for the Opposition Division to grapple with was that, while the goods covered by the Application included virtual goods for use online and in virtual environments, the earlier mark is registered for real-world goods in Classes 3 and 4.
 
The Opposition Division observed that in this case, the goods covered by the Registration in Class 3 and most of the goods in Class 35, were the real-world counterparts of the virtual goods that were covered by the Application; however, this was not per se sufficient for a finding of similarity between the goods and services.

 

The degree of similarity is a matter of law which must be assessed ex officio by the Office (Calvo, T-53/05), and is restricted to well-known facts (i.e "facts which are likely to be known by anyone or which may be learned from generally accessible sources", which excludes facts of a highly technical nature (Alpharen, T-106/12)). 

 

Kat quite happy with virtual perfume

 

 

This follows from Article 95(1) EUTMR, which states that, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. In relation to virtual goods, the Opposition Division found that, given the novelty of technologies associated with these goods, it could not be assumed that a certain market practice had been established, and therefore there were no "well-known facts" upon which the Opposition Division could base an assessment.
 
In this case, the nature, purpose and method of use of the relevant goods was not the same, and the parties had not produced any evidence or arguments showing that (for example) it is usual to trade virtual and real-world goods through the same distribution channels or to target the same relevant public.
 
The Opposition Division therefore found that there was no similarity between the goods subject to the Registration and the virtual goods in the Application. These goods were consequently to be considered dissimilar in the absence of evidence or compelling argumentation to the contrary by Artessence.  

 

Similarity in signs

In comparing the two signs, the Opposition Division found that they were visually similar to a below-average degree, taking into account: (a) the differences in the figurative aspects, albeit non-distinctive; (b) the differences in two letters, including the first letter which is the part which first catches the consumer's attention; and (c) the addition of the words "PARFUMS PRIVES" in the Registration, albeit in significantly smaller text. 

The Opposition Division found that the two signs were also conceptually dissimilar (given the concept of "private perfumes" in the Registration), but aurally highly similar (based largely on the French-speaking public who would pronounce "T" and "C" the same way). As the two signs were found to be similar in at least one respect, the Opposition Division would have to examine the likelihood of confusion. 

Distinctiveness and global assessment

 

The Opposition Division was not convinced that the evidence submitted by Artessence showed that the Registration mark had acquired enhanced distinctiveness, as none of the documents submitted contained evidence of consumer recognition or market share. In particular there was no indication of sales volumes or the extent of promotion. 

However, as the similarity between the two signs was found in the Registration mark's dominant element, and the Mark's only element, with the rest of the signs being comprised of secondary and non-distinctive elements, the Opposition Division found that there was a likelihood of confusion on the part of the French-speaking part of the public. The Opposition therefore succeeded for the goods and services found to be identical or similar, and failed for the rest.  

Comment

This decision is an important one as it is one of the first to address the issue of comparing virtual goods to their real-life counterparts for the purposes of assessing similarity; an issue which has not really been addressed so far by the courts in infringement cases. 

 

In this case the Opposition Division effectively found that it could not, of its own accord, carry out such a comparison in the absence of any "well-known facts" or established market practice. Whilst this Kat understands the reasoning, it does feel counterintuitive that, for example, "shoes" and "virtual shoes" could not be considered to be similar goods, despite the fact that retailers are increasingly using virtual/online representations of their products (e.g. through NFTs, 3D imaging, AR product try-on) in order to market their real-life products. 

What is certain following this decision is that any party seeking to oppose an application featuring virtual goods/services must produce as much concrete evidence and argumentation as possible to show why the goods are similar (for example, because they share the same distribution channels and/or target the same relevant public), rather than assuming similarity will be found because they are same goods in different formats.