14 September 2020TrademarksSarah Morgan

Invicta claims TM victory before INPI

France's National Institute of Industrial Property (INPI) sided with Invicta Watch Group earlier this month, in its bid to have a trademark applied for by Societe Parisienne de Parfums Et Cosmetiques (SPPC) rejected.

In a 'draft' (provisional) decision issued on September 7, INPI recognised Invicta’s opposition as partially justified in relation to jewellery, watchmaking and chronometric instruments, watch glasses, and cases for watchmaking.

In October 2019, perfume and toiletries company SPPC filed an application to register ‘Chairman’ as a trademark, covering jewellery, watches and key rings.

Then, in January this year, Invicta filed an opposition, citing its international trademark ‘Airman’ in opposition. The trademark, registered in 1989, covers “watch products, watches, watch parts, watch cases, watch movements, dials, [and] watch hands".

The Airman watch is sold by Swiss-brand Glycine, which was acquired by Invicta in 2016.

Franck Remy, on behalf of INPI, concluded that the goods at issue were identical or similar to the goods covered by the earlier mark.

Turning to the comparison of the signs, the office said that both the trademarks have a sequence of identical letters (Airman) and the same “two-beat rhythm”, which gives them visual and phonetic resemblances.

Remy added that while a consumer will pronounce the contested application [tch-air-mane], the presence of this “very short sequence does not make the great visual and especially phonetic similarities between the two signs disappear”.

“Moreover, there is nothing to indicate that the French consumer of average attention and culture, to whom it is only appropriate to refer, will perceive an intellectual distinction between the names Airman and Chairman of the signs in question,” said Remy, noting that this results in a risk of confusion.

According to INPI, the contested name ‘Chairman’ constitutes an imitation of the earlier trademark ‘Airman’.

The office concluded that ‘Chairman’ cannot be adopted as a trademark to designate products that are partly identical and similar without infringing the prior rights of Invicta’s ‘Airman’.

While the application was partially rejected for jewellery, watchmaking and chronometric instruments, watch glasses, and cases for watchmaking, it appears that registration can go ahead for key rings.

Invicta said it was very pleased with this “notable and just decision”, and that it would continue to “zealously defend and protect its IP rights around the world”.

Ben Natter of Haug Partners and outside IP counsel for Invicta, added: “This is an important decision in a global dispute. My client is optimistic that the decision and findings of the director general will curb the slew of frivolous filings initiated by SPPC for marks identical or confusingly similar to our client’s famous and historic ‘Airman’ mark.”

However, SPPC has said that INPI did not rule in favour of Invicta in its opposition, but "simply prepared a draft decision which on certain points is favourable to Invicta and on others to SPPC".

The spokeserson added: "This project is not a final decision and may be contested by the two companies within a deadline which expires on October 13." SPPC intends to contest.

Meanwhile, a dispute between the two parties remains ongoing before the US Patent and Trademark Office. In 2017, Invicta opposed SPPC’s attempt to register ‘Airman’ as a trademark in the US.

Most recently, in May this year, Invicta filed a motion for summary judgment in the dispute.

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