26 March 2019Trademarks

EU General Court throws out umbrella TM appeal

A French retailer has lost an appeal before the  EU General Court, which ruled that its applied-for mark would cause confusion with an earlier trademark.

In a  judgment today, March 26, the court upheld an earlier decision that the ‘umbrellas’ covered by the applied-for mark were identical to the ‘golf umbrellas’ covered by an earlier trademark.

In 2016, Andre Deray filed an application to register a trademark for the word sign  Lili La Tigresse, for goods including essential oils, jewelry, umbrellas, luggage, clothing and hair ornaments.

This was opposed by  Charles Claire, a company which sources products for professionals and retailers operating in the golfing industry. Charles Claire’s opposition was based on its earlier trademark ‘Tigress’ which covers goods including golf umbrellas, golf clubs, golf bags and caddy bags.

The court said that the Second Board of Appeal of the European Intellectual Property Office was correct in its determination that “apart from the fact that they are included in the same class of goods, golf umbrellas serve the same purpose as umbrellas, namely, to protect the user from the rain”.

It also said that in contrast to Lili La Tigresse’s argument, golf umbrellas could be used for protection against the rain in all circumstances, not only when playing golf.

Additionally, the court said it “cannot be denied” that the luggage and bags covered by the applied-for mark share their “nature and intended purpose with golf bags and caddy bags covered by the earlier mark”.

It agreed with the Board of Appeal’s finding that it is “quite probable that that those goods are aimed at the same consumer and available at the same retail outlets”.

Additionally, the court upheld the Board of Appeal’s judgment that because of the common element ‘tigress’ between the applied-for mark and earlier trademark, the marks were phonetically similar to an average degree.

In its ruling, the court determined that because the applied-for mark and earlier trademark mostly conveyed the same image—namely of a female tiger—they were conceptually similar to a high degree.

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