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8 February 2019Trademarks

Giorgio Armani loses TM opposition against Invicta Watch Company

Giorgio Armani has been unsuccessful in its bid to stop a competitor from registering a mark which it said would cause confusion with one of its earlier trademarks.

In a decision on Monday February 4, the European Union Intellectual Property Office’s Fourth Board of Appeal upheld an earlier decision by its Opposition Division that there was no similarity between a mark applied for by Invicta Watch Company and Giorgio Armani’s trademark.

The Board of Appeal determined that Giorgio Armani’s trademark and Invicta’s applied-for mark were different on “all levels, visually, aurally and conceptually”.

In October 2016, Invicta had applied to register a trademark for goods including eyewear, watches, luggage and clothing.

The mark featured the word ‘GLYCINE’ in bold black capital letters. Above the middle three letters was a figurative element of horizontal lines of receding lengths from top to bottom.

In January 2017, Giorgio Armani filed a notice of opposition based on one of its earlier marks (EU number 15 743 891). Giorgio Armani’s mark consists of a pattern of horizontal black and white lines of different lengths.

After the EUIPO’s Opposition Division rejected the opposition, Armani filed an appeal.

In its argument to the Board of Appeal, Giorgio Armani said there is an “enhanced degree of similarity” between its earlier mark and Invicta’s applied-for mark, because they both depict a “stylised bird with outspread wings”.

It added that the additional word element ‘GLYCINE’ in Invicta’s proposed mark does not change the “significant similarity” between the marks.

Giorgio Armani also argued that the board could not apply a phonetic comparison between the marks, as its earlier mark did not have a word element, and therefore “the word element cannot play a dominant role” in comparing the marks.

It added that its trademark already has an enhanced degree of distinctiveness, due to its “long-standing and extensive use” throughout the EU.

Invicta asked the board to dismiss the appeal, arguing that its applied-for mark is “clearly dominated” by the word ‘GLYCINE’.

It said the figurative elements of its mark will not necessarily be interpreted as a bird, let alone as an eagle, as Giorgio Armani’s mark is perceived.

Invicta said that “apart from the fact both marks have some horizontal stripes”, they have no similarities.

In its argument, Invicta also said that “winged devices” are widely used in the fashion and watch industry. It gave examples of watch-makers Breitling and Longines, and fashion brands BOY London and American Eagle Outfitters.

In its analysis of Giorgio Armani’s argument, the Board of Appeal said the brand’s earlier mark was used on its own very rarely, and there was “absolutely no evidence” as to the public perception of the mark in the EU.

The board also said that any similarity between the marks was counteracted by the prominent word ‘GLYCINE’, and the fact that winged logos are not rare.

In its reasoning, it said that when a mark is composed of both figurative and word elements, the word elements are more distinctive because a consumer “will more readily” refer to the goods in question by quoting the word, than by describing the figurative element.

The board applied this principle to Invicta’s proposed trademark and said the word ‘GLYCINE’ forms the most distinctive part of the mark and therefore, must play a dominant role in the comparison of the two marks.

The board said that because the word ‘GLYCINE’ had no counterpart in Giorgio Armani’s trademark, the overall impression of the two marks “is completely different”.

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More on this story

Trademarks
18 July 2019   Giorgio Armani has suffered a defeat at the Federal Supreme Court of Switzerland, which ruled that Swiss watchmaker Glycine’s trademark is not confusingly similar to Armani’s logo.
Trademarks
27 March 2020   In a loss for Italian luxury fashion house Giorgio Armani, the EU General Court rejected its attempts to file two trademarks yesterday, March 26.