In VF International Sagl v EUIPO (Case T-548/17), the General Court ruled on a case involving figurative marks of monkeys with dissimilar word elements, in a dispute which originated from EUTM opposition proceedings in 2014. Was this decision bananas?

 

In May 2014, the Munich resident Mr Ken Virmani applied for a figurative EUTM (“the ANOKHI mark”) covering a variety of goods, including jewellery in Class 14, bags in Class 18 and clothes in Class 25:

 

 

VF International Sagl filed a notice of opposition, based on two earlier figurative EUTMs (“the KIPLING marks”) which both covered a variety of goods and services, including jewellery in Class 14, bags in Class 18 and clothing in Class 25:

 

 

 

 

In November 2015, VF International filed an appeal with the Fourth Board of Appeal, but this appeal was dismissed. VF International filed an action before the General Court, submitting that the EUIPO had infringed Article 8(1)(b) and Article 8(5) of Regulation No. 207/2009.

 

In the Court’s view, “the general public will recognise clearly and keep in its mind the representation of a black silhouette of a monkey in profile, on all four legs, with a long curved tail”.

 

EUIPO’s Opposition Division held that the mark applied for would not take unfair advantage of, or be detrimental to, the distinctive character of the KIPLING marks. Due to the low degree of similarity of the marks and the different impression produced on the relevant consumer, there was no likelihood of confusion on the part of the relevant public and so VF International’s opposition was rejected.

 

Given the significant similarities between the figurative elements and the similar proportions - in particular, the ratio between the size of the verbal and figurative elements - the relevant public would perceive the marks as similar, regardless of the “anokhi” and “kipling” word elements. The court concluded that the Board had erred in finding that the marks were visually dissimilar.

 

The Court made reference to previous judgments, which stated that a
phonetic comparison was not relevant in the examination of the similarity of a figurative mark lacking word elements with another mark (Cases T‑5/08 to T‑7/08 Nestlé v OHIM EU:T:2010:123 and Case T-424/10 Dosenbach-Ochsner v OHIM EU:T:2012:58). The Court added that a figurative mark without word elements was, by definition, unpronounceable. It followed that the Board had erred in finding that the ANOKHI mark was phonetically dissimilar to the monkey device mark that lacked the word element.

 

It was common ground that the words “anokhi” and “kipling” had no meaning for the relevant public. The marks had used images with analogous semantic content which gave rise to conceptual similarity, according to the settled case-law (Case C‑251/95 SABEL EU:C:1997:528 and Case T-361/08 Peek & Cloppenburg and van Graaf v OHIM EU:T:2010:152). Accordingly, the court concluded that the Board had erred in finding that the marks were conceptually dissimilar.

 

Who cares about reputation?

The evidence demonstrated some reputation of Kipling goods. However, it was apparent that signs different from the earlier marks were also widely used to identify goods marketed by VF International:

• a great number of photographs showed goods with a round sign that included the word element “kipling” but no figurative element representing a monkey;
• a small toy monkey on a keyring was often attached to the goods but this toy monkey had a different appearance and build from the monkey in the KIPLING marks (in particular, the toy monkey had fur); and
• the toy monkeys were mentioned in a significant number of documents as allowing goods of the Kipling brand to be identified, including in extracts of a book called “Monkey Business”, which VF International conceded had been written by one of the founders of the Kipling company.

The evidence demonstrated the reputation of Kipling goods more than the reputation of the KIPLING marks. Dismissing VF International’s argument that it had established a reputation in its earlier marks, the court agreed with Board that the evidence produced by VF International, even when taken as a whole, was insufficient to establish the reputation of its earlier marks. However, given that the marks in this case had been found similar and VF International’s case under Article 8(1)(b) had succeeded, the court annulled the decision of the Board of Appeal and ordered EUIPO to bear its own costs and those incurred by VF International.

 

Comment

Although there is nothing novel in the idea that the similarity of two signs has to be based on a global assessment of the visual, phonetic and conceptual similarities between them, it is perhaps surprising that the respective signs in the present case were found to be visually, phonetically and conceptually similar, given the presence of the word elements.

 

It would be interesting to see if the General Court would have found in favour of Mr Virmani had the application included a word element with some relation to the concept of a monkey, rather than the word element “anokhi” which means “unique” in Hindi.

 

The case also illustrates that the applicant needs to establish to the requisite legal standard that the earlier marks have a reputation, a critical factor for a successful case under Article 8(5). As the General Court said, the reputation of a mark cannot be assumed on the basis of fragmentary and insufficient evidence. In that regard, it is important to remember that, since the assessment of reputation is based on overall assessment of the evidence submitted, the Board of Appeal is not required to adjudicate on the evidential value of each of the documents submitted by an owner of earlier marks.

 

 

This case also forms the subject of a case comment written by Dr. Janet Strath and Katie Cameron in the Journal of Intellectual Property Law & Practice: J.I.P.L.P. 2019, 14(4), 259-261.