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8 February 2019Trademarks

Entrepreneur Chiara Ferragni overcomes Gleissner opposition

In a win for Italian entrepreneur and influencer Chiara Ferragni, the EU General Court has set aside a trademark decision from the European Union Intellectual Property Office’s (EUIPO) Fourth Board of Appeal.

Today, February 8, the General Court backed Serendipity, the brand behind Ferragni’s clothing range, after deciding that the EUIPO was wrong to find a likelihood of confusion between its mark and an earlier Benelux word mark.

In July 2015, Serendipity (the company which sells the Ferragni clothing line) applied to register a figurative sign featuring the words ‘Chiara Ferragni’ below an image of a cartoon eye with long eyelashes. The trademark covered classes 18 and 25, for goods including bags, umbrellas, clothing and shoes.

Three months later, CKL Holdings, a company based in the Netherlands and owned by entertainment industry figure Michael Gleissner, opposed the application based on its earlier word mark ‘Chiara’ which covers class 25.

Readers will likely be familiar with Gleissner, a serial trademark filer who has also filed many trademark oppositions.

In October 2016, the EUIPO’s Opposition Division partially upheld the opposition with regard to 'bags, knapsacks; key cases; leather wallet 'in class 18, and all the goods covered by the mark in Class 25.

Serendipity appealed against the decision but the Fourth Board of Appeal dismissed the appeal in July 2017.

In coming to its conclusion, the appeal board found that the covered goods in class 25 were identical, the goods in class 18 were similar to an average degree and that the similarity of the signs created a likelihood of confusion.

Again, Serendipity appealed against the decision, arguing that the appeal board had erred in finding a likelihood of confusion and erred in its assessment of the visual, phonetic and conceptual similarities of the marks.

While the appeal board had concluded that the word element of Serendipity's trademark constituted the dominant and distinctive part of the mark, the General Court today found that the highly stylised nature and size of the cartoon eye meant that the figurative element of the mark is at least as distinctive as the word elements.

The court went on to state that although the word element ‘Chiara’ is present in both marks, as a whole, the signs were only weakly similar.

On a phonetic level, the court said that because of the common element of ‘Chiara’ the signs have a degree of similarity, but this can only be an average or weak similarity because of the additional elements in Serendipity’s mark.

The presence of an eye in Serendipity’s mark precluded any conceptual similarity between the marks, according to the court.

The General Court then ruled out the existence of a likelihood of confusion and overturned the EUIPO’s decision.

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