A lion's head is a weak trade mark, says General Court

 

On 20 December 2023, the General Court (GC) issued its decision in the case T-564/2 regarding the registration of an EU figurative trade mark representing a lion’s head encircled by rings forming a chain in classes 14 and 25.

 

Background

 

On 23 November 2017, Pierre Balmain (the applicant) filed an application for registration in classes 14 and 25 of the following figurative EU trade mark: 

Polish company Story Time sp. Z o.o. filed an opposition based on its earlier Polish figurative trade mark registered in classes 14 and 25:

 

On 18 November 2021, the Opposition Division upheld the opposition. The decision was appealed. The Board of Appeal (BoA) dismissed the appeal (R 96-2022) on the ground of likelihood of confusion within the meaning of Article 8 (1)(b) of Regulation no. 2017/1001. In particular, the BoA took the view that, in the context of the global assessment of the likelihood of confusion, the relevant public’s level of attention varied from average to high, that the goods at issue were identical or similar from low to high, that the trade marks at issue were visually similar to an average degree and conceptually identical and that the earlier trade mark had a normal degree of inherent distinctiveness.

 

The applicant appealed the decision to the GC.

 

Image via Pexels

The General Court’s decision

 

Regarding the subject matter of the proceeding, the GC recalled that the judgment of 5 February 2020, regarding the same trade mark “representation of a lion’s head encircled by rings forming a chain (T‑331/19, see The IPKat here), was not appealed and therefore had become final for “decorative cuff link covers”, “lapel badges of precious metal” and “precious metals and their alloys (not for dental purposes)” in Class 14.

 

The GC therefore examined the evaluation by the BoA on the likelihood of confusion.

 

The GC firstly confirmed that the relevant territory is Poland (this point was no longer contentious).

 

Regarding the relevant public, the GC recalled that it consists of consumers who are likely to use both the goods protected by the earlier mark and those covered by the trade mark application (T‑270/09). Moreover, in the context of the global assessment of the likelihood of confusion, it is necessary to consider the group of goods protected by the trade marks at issue and not the goods marketed under those marks (T‑49/20). It follows that products in class 25 (clothing) include goods which vary widely in quality and price. The same reasoning can be applied to products in class 14 (jewellery). These products are directed at both professionals (jewellers) and consumers. In this latter case the level of attention is in most cases high.

 

It is worth noting that the applicant had contested that the relevant public displays a high level of attention for some of the goods in class 25 (gowns, petticoats, tailleurs, dinner suits, pelerines, gabardines, waterproof clothing, furs, stoles, sashes for wear, lingerie, pumps footwear), because they are not used on an everyday basis and being expensive.

 

The GC therefore confirmed the BoA’s assessment of the relevant territory, the relevant public and its level of attention, which varies from average to high.

 

Coming to the comparison of the trade marks at issue, the GC held that, in the fashion sector, it is a banal or common practice to use representations of lions or lions’ heads (in general of wild, strong and exotic animals) and other graphic elements are inherently banal decorative motifs.

 

Consequently, the BoA erred in finding that the earlier mark had an average degree of inherent distinctiveness, since that degree of inherent distinctiveness must be regarded as low.

 

The GC therefore concluded that, due to the weak distinctive character of the earlier mark, the fact that the trade marks at issue are visually similar to an average degree was not sufficient to establish a likelihood of confusion, even if the goods were identical. The contested decision was annulled on this point.

 

Comment

 

The main take-away of this case concerns the strength – or rather: lack thereof – of marks depicting wild and exotic animals in the fashion sector.  Moreover, the GC provided useful clarifications on the evaluation of the likelihood of confusion in the fashion sector, especially with regard to certain products in the clothing sector which are supposed to differ from others being luxury goods.