Play the name game with Giovanni? General Court does not duck the issue

It is widely known that, if you want to create an impression of elegance and sophistication, you can do so by using an Italian name, especially in fashion and beauty market sectors. In Case T-559/13 Giovanni Cosmetics Inc. v OHIM, Vasconcelos & Gonçalves SA two trade marks consisting of Italian names faced one another in a dispute focused on the distinctiveness of the shared forename "Giovanni" and the impact of the surname "Galli" within the trade mark applied for.

Contested CTM application

US-based corporation Giovanni Cosmetics Inc opposed Goncalves's figurative Community trade mark (CTM) application for GIOVANNI GALLI, represented below, on the basis of its earlier GIOVANNI CTM word mark. Both marks covered cosmetics and cleaning preparations in Class 3. The General Court upheld the decisions of both the Opposition Division and the Board of Appeal insofar as it agreed that there was no likelihood of confusion under Article 8(1)(b) of Regulation 207/2009 -- even though the Board of Appeal made several errors in its own decision.

The General Court considered (and everyone agreed) that the goods of the respective parties were partly identical and partly similar and that the relevant public was composed of average EU consumers with an average level of attention, conceding that some of the goods --- “cosmetics” and “cleaning preparations” -- required a certain degree of reflection relating to consumers' preferences and needs. 

Giovanni Cosmetics: do they cost the Earth?
After you buy them, you can't afford clothes ...

However, contrary to what the Board of Appeal held, GIOVANNI would not be perceived as a common Italian first name in the whole EU. Therefore the Court made a distinction: while the Italian public could identify Giovanni as a common first name and Galli as a rare surname, giving "Giovanni Galli" a greater distinctiveness, the majority of the public outside Italy would assign identical distinctive character to both "Giovanni" and "Galli". The General Court also rejected the Board of Appeal's ruling that, according to settled case-law, surnames are more distinctive than first names.

In doing so the Court referred to its previous decisions and to the Court of Justice's judgment in Case C-379/12P Arav v H.Eich and OHIM, explaining that it is not possible to draw a general rule that is valid throughout the entire EU from the consideration that, in part of the EU, surnames have a more distinctive character than first names. When assessing distinctiveness, due importance should be given to the circumstances of the case, especially to whether the surname is unusual or quite common. However, OHIM had provided no evidence as to the perception of the surname "Galli" as against the name "Giovanni" throughout the EU .

Having taken this view, how then did the General Court rule out the likelihood of confusion?

Cosmetic cat*

That Court first found that the earlier GIOVANNI CTM's inherent distinctiveness was average in relation to the goods concerned, rejecting the notion that Google search results could help Giovanni Cosmetics demonstrate that its mark had enhanced distinctiveness through use. Said the Court, the high rating position of links to the CTM proprietor’s website could be justified in the light of the earlier mark’s well-known character in the United States; they did not show that EU consumers were familiar with the earlier mark, given that no evidence was provided of its market share, of how intensive, geographically widespread and long-standing its use was, of the investment in its promotion and of how significant a portion of the public perceived the sign as a trade mark. The Court then stated that the fact that the marks at issue shared the same forename Giovanni could not lead to the conclusion that the relevant public would confuse the commercial origin of products covered by the two marks. That was so even though it was common practice in the beauty products sector to market products either under a combination of surnames and first names or alternatively under one or the other.

The decision in Case C-51/09 Becker v Harman International Industries (BARBARA BECKER v BECKER) could apply by analogy to this controversy in order to conclude that a likelihood of confusion does not automatically exist 'when the earlier mark consists of a first name and the mark applied for consists of a combination of that first name and a surname'. 

In the present dispute there was no likelihood of confusion although the goods were identical or similar and the marks had a certain degree of similarity. Looking at the circumstance of the case, besides the first name Giovanni, the CTM application also contained the surname "Galli" and a duck design which contributed to substantial visual differences between the marks, especially taking into account that EU consumers can always see cosmetics and cleaning preparations before purchasing them.

In respect of Italian consumers, a finding of absence of confusion was even more justified in the view of the greater distinctiveness given to the component "Galli" in the CTM application than to the shared element "Giovanni".

Merpel is very puzzled by the applicant's mark.  As a linguistic expert, she knows that "Gallo" is the Italian for a rooster and that "Galli" is the plural form of "Gallo" (like "spaghetti", being the plural of "spaghetto"). But the bird on the applied-for sign is a duck, which is nothing like a rooster ...

* Artwork from Paul & Joe's Spring Collection 2012, on style frizz.