EU GENERAL COURT RULES THAT “CHIARA FERRAGNI” IS NOT CONFUSINGLY SIMILAR TO “CHIARA”
In 2015 Serendipity S.r.l. filed an application to register the figurative sign “Chiara Ferragni” for the classes 18 and 25. The opposition filed by a Dutch company that holds the earlier Benelux word trade mark ‘Chiara’ registered in class 25 against the above trademark was found successful, as the EUIPO found subsisting likelihood of confusion. Subsequently, the GC annulled the EUIPO decision.
The General Court recently issued a ruling on the trademark case bearing the name of the famous Italian influencer. The case shows how vital trademarks are in the fashion industry. In the visual comparison of signs composed by word and figurative elements, word elements are considered to be, as a general principle, more distinctive than figurative elements; in particular, consumers would more likely identify the products by saying the name of the trademark, rather than describing its figurative element. However, in complex trademarks the figurative element may be as important as the word element, taken in consideration its shape, dimension, color or position.
The GC held that the figurative element of “CHIARA FERRAGNI” is very peculiar, as it represents a stylized eye with long black lashes; the position and the dimension of the eye make the figurative element predominant in the sign. Therefore, consumers would easily memorize it, perceiving it as an elaborate and original element of the sign. In addition, the element “Ferragni” is visually more important than “Chiara”. It follows that the earlier trademark “Chiara” and the sign “Chiara Ferragni” should have been considered similar to a low extent. Turning to the assessment of the aural similarity, it can be stated that consumers usually focus on the initial part of the sign, which is the same in this case. However, as “Chiara Ferragni” is also a given name and a surname, it cannot be affirmed that the public focuses more on the name rather than on the surname, considered that it is a foreign name for Benelux’ consumers.
Furthermore, just because the marks contain the same female name, this does not mean that the marks are conceptually similar. Indeed, the trademark applied for identifies and distinguishes a certain person, that is a person belonging to the Ferragni family, while the earlier trademark only refers to a name without identifying a certain person. Coming to the assessment of likelihood of confusion, the GC found that the visual similarity of the signs plays a central role in determining the likelihood of confusion, as the products of class 18 and 25 are usually sold in self-service shops. In this type of situation, consumers’ attention is certainly captured by the blue eye sign, rather than by the word “Chiara”.
Despite the existence of a similarity between the products at issue, the differences between the signs, in particular from a visual standpoint, are sufficient to exclude the subsistence of any risk of confusion in the perception of the relevant public.