EU General Court dismisses Asics trademark appeal
The EU General Court today dismissed a trademark appeal from Japan-based footwear company Asics.
By doing so, the court upheld a previous decision by the European Union Intellectual Property Office (EUIPO) that rejected an opposition made by Asics against an applied-for trademark.
In July 2013, Netherlands-based textiles company Van Lieshout Textielagenturen filed an application at the EUIPO for a figurative sign showing four criss-crossing lines.
The trademark was applied for in relation to goods including leather and imitations of leather products (class 18), textiles (class 24), and clothing, footwear and headgear (class 25).
In October 2013, Asics filed a notice of opposition at the EUIPO.
The footwear brand based its opposition on one earlier EU figurative mark and one Spanish figurative mark, both made up of stylised criss-crosses.
The EU mark, which is registered under trademark number 3,242,187, covers goods in classes 18 and 25 including leather and leather imitations, and footwear and headgear. Meanwhile, the Spanish mark (683,545) is registered in class 25 corresponding to footwear.
However, the EUIPO’s Opposition Division rejected the opposition in its entirety in September 2016 and ordered Asics to bear the costs.
This decision was upheld by the EUIPO’s Fourth Board of Appeal in June 2017 following an appeal by Asics.
According to the board, the only similarity between the signs at issue was the presence of lines which crossed. As such, the board decided that the marks gave a different overall visual impression.
Asics argued before the General Court that neither the Opposition Division nor the board compared the earlier Spanish mark with the applied-for mark—and instead only referred to the EU mark.
In its judgment today, the General Court said that as the Spanish mark is so similar to Asics’ earlier EU mark, the board did not disregard the existence of the Spanish mark.
“Moreover, as rightly pointed out by the EUIPO, the applicant [Asics] claimed the seniority of the earlier Spanish mark for the purposes of registration of the earlier EU trademark, which demonstrates that the applicant itself considered that those marks were identical,” said the court.
Asics also argued that the board was wrong to find that the signs at issue were dissimilar and claimed that there would be a likelihood of confusion between the marks at issue with the relevant public.
According to Asics, the board incorrectly assessed the overall visual similarities of the marks. The company said the earlier and applied-for marks display “significant similarities, which the minor differences are unable to offset”.
The General Court noted that the applied-for mark consists of “four thin black lines with a serrated outline” on a slight slant. The court said that this mark could be perceived as a hashtag.
On the other hand, Asics’ earlier marks are composed of four curved thick black lines. According to the court, the elements in these marks give an impression of movement.
The court ruled that as a result, the consumer would not make a connection between the signs at issue “solely on the basis that they are both composed of parallel lines crossing two other longer lines”.
Because the court agreed with the EUIPO that the marks are not visually similar, it said there would be no likelihood of confusion between them.
Asics’ appeal was dismissed and the company was ordered to pay the costs.
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