An interesting case concerning shoes MADE IN ITALY was decided before the CFI. Was there a likelihood of confusion between the signs MAIMAI MADE IN ITALY and YAMAMAY? The analogy between the letters Y and I was also discussed, as was the distinctiveness of the element MADE IN ITALY – for shoes.
MAIMAI MADE IN ITALY versus YAMAMAY
The trademark dispute about the likelihood of confusion between the signs MAIMAI MADE IN ITALY and YAMAMAY began in 2015 when Calzaturificio Emmegiemme Shoes Srl (Italy) applied for registration of the word mark MAIMAI MADE IN ITALY as an EU trademark. In 2013, Inticom SpA (Italy) filed an opposition against this trade mark registration on the grounds of likelihood of confusion and invoked its own EU word mark YAMAMAY, which has been protected since 2006.
This trade mark dispute dragged on for several years and decisions, as a result of which the trade mark applicant restricted its trade mark application to certain goods in class 25, including in particular clothing and footwear. The Opposition Division subsequently rejected Inticom’s opposition in its entirety, but had to review this decision and continue the proceedings after Initcom successfully intervened before the Board of Appeal.
By decision of 3 August 2018, the Opposition Division finally partially upheld the opposition, and this was confirmed by the Board of Appeal by decision of 14 July 2020 (‘the contested decision’). The signs to be compared had a certain degree of visual similarity, albeit low, and at least a medium degree of phonetic similarity, the Board of Appeal found, in particular the Spanish, Latvian, Hungarian, Polish and Portuguese publics. This was true for those goods for which genuine use had been proven, namely clothing and footwear. For these goods, there was a likelihood of confusion.
The trade mark applicant Calzaturificio Emmegiemme Shoes appealed against this decision before the European Court (Court of First Instance, CFI), which ruled on 9 February 2022 (T-589/20).
CFI: shoes MADE IN ITALY
First, it alleged a violation of the principles of fair and adversarial proceedings within the meaning of Article 47 of the Charter of Fundamental Rights: the Board of Appeal should have remitted the case to the Grand Board, it argued. Instead, this case had been referred to the same Board of Appeal that had previously ruled – and without the obligation to compose this Board differently.
The CFI rejected this. This did not constitute a misrepresentation of Article 35(1) of Delegated Regulation 2018/625 and Article 166(4)(c) of Regulation 2017/1001, nor did it breach the duty of administrative impartiality under Articles 41(1) and 47 of the Charter.
Moreover, the trade mark applicant complained that the findings on the similarity between the signs were insufficient to the decision for likelihood of confusion and, moreover, that the analysis of evidence of use of the earlier mark was also faulty.
However, the CFI rejected both pleas.
Proof of use of the earlier mark
In order to qualify the use of an EU trade mark as effective, it is not necessary that it is used in a substantial part of the territory of the Union, the CFI explained. Please notice, that this is different from the proof of use of an acquired distinctiveness.
In the case at hand, proof of use of the earlier mark had been provided by articles contained in fashion, information and traditional costume magazines and newspapers published in Greece and Spain. In addition, invoices from 2007 to 2012 addressed to customers in Spain, Greece, Germany, Cyprus and the United Kingdom were taken into account. In particular, the Board of Appeal found that the combination of the invoices addressed to customers in Spain and Greece and the press reviews in those countries constituted evidence of the economic activity generated by the commercial use of the mark and that this was sufficient to exclude any purely fictitious use of the latter.
This was sufficient evidence, the CFI ruled.
MAIMAI MADE IN ITALY and YAMAMAY – similarity?
There may be a likelihood of confusion if there is a fundamental similarity of the goods/services claimed and/or the signs. The greater the similarity of the goods, the lesser the similarity of the signs may be and vice versa.
Both parties agreed that the goods were partly identical and partly similar. They disagreed on the similarity of the signs.
The Board of Appeal had found that the differences between the distinctive word elements “maimai” and “yamamay” of the signs were not sufficient to compensate for the sequence of letters “m”, “a”, “m”, “to”, which were identical in both signs.
MADE IN ITALY – distinctive?
In this respect, the addition “made in Italy” in the mark applied for had a particular value.
However, the CFI upheld the Board of Appeal’s finding that MADE IN ITALY was to be regarded as devoid of distinctive character. The public would perceive MADE IN ITALY as mere information about the geographical origin of the products, therefore this information would not be pronounced by consumers at all, the Board of Appeal had concluded – rightly, according to the CFI.
Equally in vain, the applicant contested the Commission’s finding that the letters “i” and “y” are pronounced identically or very similarly in most relevant languages, although some of the alphabets mentioned by the Board of Appeal did not even contain the letter “y”.
However, this argument was also rejected, because the applicant had neither substantiated this claim nor explained what consequences were to be drawn from it with regard to the alleged difference in the pronunciation of the letters ‘i’ and ‘y’.
Moreover, since both signs were fanciful terms and therefore no finding on conceptual similarity was possible, the CFI held that the Board of Appeal had not erred in finding that the signs had a low degree of visual similarity and at least an average degree of phonetic similarity and that there was therefore a likelihood of confusion for clothing and footwear.
The action brought by Calzaturificio Emmegiemme Shoes Srl was dismissed in its entirety.
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