General Court kicks out most of shoe trademark appeal
The EU General Court yesterday dismissed most aspects of a trademark appeal made by Eduard Meier, a German company that is reportedly the oldest existing shoe maker in the world.
Eduard, which dates back to 1596, applied to register ‘Safari Club’ as a trademark with the European Union Intellectual Property Office (EUIPO) in 2014, covering leather goods and footwear in classes 18 and 25.
But Italy-based Calzaturificio Elisabet, which is also in the shoe making business, filed an opposition to the mark’s registration in 2015.
Calzaturificio claimed that the applied-for mark would be confused with its earlier Italian figurative mark, which features the words ‘Walk Safari’ under the initials ‘WS’. The Italian company’s earlier mark also covers leather goods and footwear.
The EUIPO upheld the opposition in 2016, and Eduard filed a notice of appeal.
In 2017, the Fourth Board of Appeal said that Eduard’s appeal was unfounded. The board held that ‘Safari Club’ is “conceptually identical” to ‘Walk Safari’, resulting in a likelihood of confusion between the marks for all goods covered by them.
Eduard appealed against the decision, claiming that there is no likelihood of confusion between the marks, and the similarities deriving from the shared word ‘safari’ are insufficient to counteract the differences between other elements of the marks.
The German company argued that the dominant element of Calzaturificio’s mark is the ‘WS’ at the top of the trademark, rather than the common word element ‘safari’, so consumers will pay more attention to the top letters.
Finally, Eduard also alleged that the word ‘safari’ is an established term used generally in the fashion industry and produced documentation to that effect.
Yesterday, the General Court said that the documents and accompanying argument are inadmissible, as the court’s job is to rule on the legality of decisions rather than re-assess the facts of the case.
Although the ‘WS’ is located at the top of the mark, the letters are simply the first letters of the word element, ‘Walk Safari’, the court said. It explained that consumers will see the ‘WS’ as an abbreviation of ‘Walk Safari’.
“Such an abbreviation cannot constitute the distinctive and dominant element” of a mark, the General Court explained.
The court affirmed the board’s finding that a likelihood of confusion between the marks exists in relation to most of the goods they cover.
However, the General Court said that in relation to certain hunting-related goods covered by the applied-for mark, the word ‘safari’ will not be understood as an indication of commercial origin and instead, other elements “will prevail in the overall impression conveyed” by the mark.
It held that the board was wrong to find a likelihood of confusion between the marks in relation to ‘game bags’ in class 18 and the ‘clothing for hunting, clothing and hunting boots’ in class 25.
The General Court annulled the board’s decision in respect of the hunting goods but dismissed the remainder of Eduard’s appeal. The court ordered each party to bear their own costs.
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