istock-866166566-ekaterina-molchanova
25 September 2018Trademarks

EU General Court rejects sandal manufacturer’s TM appeal

The EU General Court today rejected a trademark appeal made by the world’s largest manufacturer of sandals, Grendene, against a jewellery company.

In January 2013, the World Intellectual Property Organization granted the international figurative mark for the word ‘Hipanema’ designating the EU to two individuals.

The EUIPO received notification of the international registration in April 2013.

In March 2016, the mark was transferred to France-based jewellery manufacturer Hipanema.

The mark covers goods including jewellery, precious stones, and bracelets.

Brazil-based sandal manufacturer Grendene opposed the mark in July 2013 for all of the goods covered by it.

The opposition was based on three EU figurative marks and one Spanish figurative mark for the word ‘Ipanema’. The marks are all registered for sandals.

However, the EUIPO’s Opposition Division rejected the opposition on the ground that the goods and services at issue were “clearly dissimilar”.

The EUIPO’s Second Board of Appeal then dismissed an appeal by Grendene in January 2017, upholding the Opposition Division’s finding that the goods covered by the marks were different and not in competition.

The board also noted that the Spanish mark had expired.

On appeal to the General Court, Grendene said that during the board’s assessment of the similarity between the goods, it incorrectly failed to take into account Hipanema’s “tacit recognition” that such similarity exists.

“In that regard, the applicant relies on the intervener’s [Hipanema’s] commercial practice in which it advertises and associates commercial offers on its website in respect of, on the one hand, certain goods covered by the mark applied for under the trademark ‘Hipanema’, with, on the other hand, certain identical or similar goods covered by the earlier marks under the mirror-image mark ‘Amenapih’,” the court said.

It added: “The applicant [Grendene] adduces items of evidence which, it claims, relate to the ‘reality of the market’ and allow it to conclude that the goods marketed or advertised together under identical or parallel trademarks have a high degree of similarity.”

However, the General Court said that the board was not obliged to take into account the “reality of the market” and that it was irrelevant.

“In any event, it must be held that the applicant has failed entirely to establish ‘recognition’ by the intervener, even ‘tacit’ recognition, of any form of similarity between the goods at issue on the basis of the intervener’s commercial practices,” said the General Court.

The court added that Grendene’s evidence did not establish any commercial offer of footwear, only clothes, which are not covered by Grendene’s earlier marks.

The General Court ruled that the board did not err in concluding that the goods at issue were different and not even slightly similar. Subsequently, any likelihood of confusion between the marks was ruled out.

Grendene’s appeal was rejected and it was ordered to pay the costs.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today's top stories

Lawyers concerned by no-deal Brexit guidance on IP exhaustion

AIPPI 2018: Novartis’s IP protection strategy and warning letters in China

Existing EUTMs to cover UK in no-deal Brexit, says government

Iancu: USPTO may revise s101 guidance on abstract ideas

AIPPI 2018: The FRAND battleground and ‘life-or-death’ decisions

Mayer Brown adds tech IP partner from Davis Polk

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Trademarks
27 September 2018   The EU General Court has dismissed an appeal by a German company in a dispute over a trademark application portraying a chameleon.