Armani fails to convince EU court to register ‘Le Sac’ TMs
In a loss for Italian luxury fashion house Giorgio Armani, the EU General Court rejected its attempts to file two trademarks yesterday, March 26.
Armani failed to convince the court that its two trademarks—‘Giorgio Armani Le Sac 11’ and ‘Le Sac 11’—didn’t cause a likelihood of confusion with three ‘Lesac’ trademarks owned by Spanish individual Felipe Asunción.
Launched in 2015, Armani’s Le Sac 11 is a square leather handbag with short top handles.
In December 2014, Armani sought to register ‘Le Sac 11’, before also applying to register ‘Giorgio Armani Le Sac 11’ in March 2015. Both trademarks covered goods in classes 18 and 25, such as handbags and clothing.
Later in 2015, Asunción filed notices of opposition against the two marks, citing his three Spanish marks, which covered classes 18, 25, and 35 (retail sales services). In response, Armani requested that Asunción show proof of genuine use of his earlier marks.
The European Union Intellectual Property Office’s (EUIPO) Opposition Division concluded that Asunción had made genuine use of his trademarks and upheld his oppositions, decisions which Armani subsequently appealed against.
In August 2018, the EUIPO once again sided with Asunción, with the Fourth Board of Appeal dismissing Armani’s appeals. Armani appealed against the decisions but, in two rulings handed down yesterday, the General Court affirmed the EUIPO’s conclusions.
Armani’s arguments
In both cases, Armani put forward the same arguments.
The General Court split Armani’s first plea into two parts: the first of which alleged that the appeal board should not have reassessed Asunción’s evidence of use and the second of which is based on infringement of the right to be heard.
Both parts of the plea were dismissed, with the court finding that the appeal board had regard to the scope of its powers by carrying out a new, full examination of the evidence of genuine use.
On the second part of the plea, the court stated that Armani had had the opportunity to submit its observations on the evidential value of Asunción’s proof, so its plea was unfounded.
The court also rejected Armani’s argument that the EUIPO had been wrong to find the services protected by Asunción’s earlier trademark were ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ and not simply ‘retail sales services’. The mark was registered in respect of ‘retail sales services’ without any further details.
“According to the case law, retail trade in goods constitutes a service in class 35 … That class also includes, according to the explanatory note of the World Intellectual Property Organisation to the Nice Agreement with regard to the services in that class, ‘the bringing together, for the benefit of others, of a variety of goods …, enabling customers to conveniently view and purchase those goods’,” said the court.
It added that, contrary to what Armani argued, the term ‘retail sales services’ is not a vague term and covers the retail sale of any goods.
Finally, the court also rejected Armani’s dispute of the evidence provided by Asunción and its arguments that the EUIPO had erred in finding a likelihood of confusion.
Armani was ordered to pay costs in both cases. The decisions are available here and here.
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