EU General Court sides with EUIPO in decade-long trademark dispute
The EU General Court today sided with the European Union Intellectual Property Office (EUIPO) in a trademark dispute which started a decade ago.
In 2008, Italy-based fashion retailer Camomilla applied to register its name as a trademark in classes 9, 14, 18, and 25.
The mark, registered in September 2009 (number 7,077,555), covered a range of fashion products, such as glasses, jewellery, leather goods, and clothing.
In December 2009, CMT Compagnia Manifatture Tessili, another Italian company, filed invalidity proceedings against the mark in respect of all goods.
CMT owns an Italian figurative trademark (number 407,266) which features the word ‘Camomilla’ in a shape outlined with dots. The mark was registered in 1986, and covers clothing and accessories in class 25.
In 2011, the EUIPO’s Cancellation Division rejected CMT’s application for invalidity.
It found that CMT had not provided proof of its earlier mark, and that there was no risk of confusion between the figurative mark and the applied-for mark.
CMT appealed against the decision, but in 2012, the First Board of Appeal sided with the Cancellation Division.
In 2013, CMT asked the General Court to annul the board’s decision, and the General Court did so in 2015 in an unpublished decision.
The General Court noted that CMT had provided evidence of the earlier-registered mark’s use but that it was submitted late and the board had not made appropriate use of its discretion by finding that this evidence was inadmissible.
In 2016, the EUIPO’s Fifth Board of Appeal revisited the matter and partially upheld CMT’s invalidity application.
The Fifth Board of Appeal found that the earlier-registered mark had been used in relation to class 25 goods (clothing, accessories, and footwear) in Italy, so the ‘Camomilla’ mark may be confused with CMT’s mark when used on goods in class 18 and class 25 (leather goods, clothing).
However, it upheld the registration of the ‘Camomilla’ mark in all four classes for other goods, including glasses, jewellery, suitcases, and footwear.
At the General Court for the second time, Camomilla claimed that its mark should not have been invalidated in respect of any goods.
Meanwhile, CMT argued that the ‘Camomilla’ mark should be invalidated in relation to many of the remaining goods (such as glasses, jewellery, suitcases, and all class 25 goods).
CMT asked the court to find that a likelihood of confusion exists between the ‘Camomilla’ mark when applied to these goods and its own earlier-registered mark.
And the EUIPO asked the court to dismiss the appeal and the cross-appeal, and uphold its decision.
Today, the General Court sided with the EUIPO and affirmed the Fifth Board of Appeal’s finding.
Dismissing Camomilla’s appeal, the court said that the marks at issue are highly similar and, when applied to identical goods, there is a likelihood of confusion.
With regard to CMT’s cross-appeal, the court said that the remaining goods covered by ‘Camomilla’ do not have the same nature, purpose, or characteristics as the goods covered by CMT’s earlier-registered mark.
The Fifth Board of Appeal was therefore correct to maintain the registration of ‘Camomilla’ for the remaining goods, the court said.
The court said that Camomilla and CMT must each bear their own costs and half of those incurred by the EUIPO.
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