CANAL UP THE CREEK WITHOUT A TRADE MARK

The Court of First Instance (CFI) of the European Communities has given its ruling today in Case T-301/03 Canali Ireland Ltd v OHIM, Canal Jean Co. Inc., on a Commmunity trade mark (CTM) appeal from OHIM's Second Board of Appeal. Canal applied to register as a CTM a figurative mark (depicted here) for clothing in Class 25. Canali opposed, citing its earlier Italian registration of the word mark CANALI for goods and services in Classes 3, 6, 9, 14, 16, 18, 20, 25, 34 and 42 and submitting that there was a likelihood of confusion. The opposition succeeded before the Opposition Division, which concluded that the high likelihood of association between the two marks outweighed their relatively low degree of similarity. The Second Board of Appeal disagreed, allowing Canal's mark to proceed to registration. Canali appealed.

The CFI dismissed the appeal. In its decision it said (at para.61):

"As regards the applicant’s argument that it is common in the clothing sector for the same mark to be configured in different ways and for the same clothing manufacturer to use sub-brands for the same clothes, the Court finds that the degree of similarity between the marks at issue is not sufficiently great to justify the conclusion that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from undertakings which are economically linked".

The CFI then added (at para. 62):

"As far as the enhanced distinctiveness of the earlier mark is concerned, as the opposing marks have been found to be visually, aurally and conceptually dissimilar, this cannot alter the overall assessment of the likelihood of confusion".

The IPKat agrees. It now seems plain that decisi0ns such as Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359 have had their day and that you can't get two marks'-worth of protection for one by registering a figurative mark with a word in it.

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