EU court rejects Arctic Cat’s “fantasy” feline mark
Sportswear brand Slazenger’s opposition to the registration of a fantasy feline design mark has been upheld by the EU General Court.
The EU General Court delivered its judgment today, affirming a decision made by the European Union Intellectual Property Office’s (EUIPO) Fifth Board of Appeal in January 2016.
Specialist vehicle provider Arctic Cat applied to register a design mark depicting a black leaping feline, with the EUIPO, in November 2007. Arctic Cat sought registration in classes 12 and 25, to cover sport vehicle-specific clothing and accessories such as protective outerwear and face masks.
Slazenger then opposed the mark on the ground of similarity. Slazenger owns a figurative mark depicting a black leaping feline, facing the other direction to the applied-for mark, under EU trademark number 4,071,528 for class 25, and UK trademark number 2,380,107 for class 12.
The EUIPO’s Opposition Division upheld Slazenger’s opposition for both classes in October 2014, so Arctic Cat appealed. In January 2016, the Fifth Board of Appeal concurred with the ruling in respect of class 25 but upheld Arctic Cat’s appeal in respect of class 12.
The appeal board found that there was likelihood of confusion between Arctic Cat’s mark and the ‘528 mark, particularly as the goods covered by both marks are identical and the marks have similar visual and conceptual elements.
The specialist vehicle company appealed to the General Court, asking the court to annul the decision regarding the class 25 opposition.
It alleged that the EUIPO had erred in its evaluation of the relevant public and the likelihood of confusion, and claimed that the court had failed to take into account the “weak distinctive character” of the earlier mark when assessing likelihood of confusion.
The court considered whether the relevant public should be limited to those with a “higher level of attention when choosing safety and protection goods” but found that the scope of protective outerwear, in class 25, was sufficiently broad to include sporting articles in general, thus appealing to the average consumer.
It also upheld the finding of similarity of the signs as a whole, as they are “at least partially identical as regards one or more aspects”.
Arctic Cat claimed that its mark depicts a “fantasy animal” jumping rather than a black panther “tilting”, as is the case with Slazenger’s mark.
The differences, such as the opposite directions the cats face, are not details that consumers “notice” or “remember”, said the court. It found that both marks depicted black silhouettes of members of the cat family represented in profile, “conveying an impression of movement”.
Arctic Cat also claimed that Slazenger’s mark was “allusive” in relation to the goods it covers, and referred to other marks representing members of the cat family to illustrate its weak distinctive character.
But the court dismissed this claim, referring to the actual presence of such marks on the market rather than those which are registered.
It continued, “a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion”.
The action was dismissed and Arctic Cat was ordered to pay costs.
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