The EUIPO decides on a ferocious battle between two tigers

The General Court of the EU handed down its judgement in case T105/18 on 26 March 2019.

The case at hand concerned an appeal against the decision of the Second Board of Appeal of the EUIPO, regarding an EU trade mark application to register LILI LA TIGRESSE in the name of Andre Deray (of French retailer Lili la Tigresse) and subsequent opposition by Charles Claire LLP (a company which manufactures and retails golfing equipment) on the basis of its prior rights in EU trade mark TIGRESS.

The opposition

At first instance, the Opposition Division held that a likelihood of confusion would exist between the earlier goods and the contested goods, as umbrellas are identical to golf umbrellas and similar to parasols. Luggage and bags are also similar to golf bags and caddy bags as they have the same nature, purpose, distribution channels and producers. Clothing was also deemed to be similar to golf gloves to a low degree.

Unsurprisingly, the Opposition Division held that the marks were visually and aurally similar given the replication of the word TIGRESS in the contested mark. Further, given that both marks conjure up the image of a female tiger, there was held to be a high degree of conceptual similarity between the two.

The Opposition Division therefore had no trouble in finding the existence of a likelihood of confusion under Article 8(1)(b) EUTMR and the Contested Application was refused in relation to the goods the subject of the opposition.

The appeal to the Board of Appeal

The Applicant appealed to the Second Board of Appeal on the grounds that the contested goods in class 25 bear no similarity between the Earlier Goods in class 28.

Further, the Applicant argued that umbrellas and parasols are dissimilar to golf umbrellas, as the latter are not used to protect their owners from rain. Luggage and bags were also argued not to be similar to golf bags and caddy bags as, according to the applicant, they do not target the same consumers and are not bought in the same shops.

Predictably, the applicant also argued that the Opposition Division had erred in placing too much emphasis on the element TIGRESS in the Contested Mark, rather than what it considered to be the dominant element of the contested mark, the female name LILA.

To counter these arguments, the opponent restated that luggage and bags were similar to caddy bags and golf bags, and, more controversially, that clothing and golf clubs may be similar as they have a similar nature, purpose and channel of distribution. It also argued that TIGRESSE is the distinctive element of the contested mark and requested that the Opposition Division's decision be upheld.

The Board of Appeal held that the Opposition Division did not err in its findings of identity and similarity between:

• umbrellas and parasols and golf umbrellas
• luggage and bags and golf bags and caddy bags
• clothing and golf gloves.

In relation to the comparison of the marks, the Board commented that "it is true that the signs differ, but not in crucial details" , and pointed to the practice of deriving sub-brands from house brands in order to distinguish the different lines of a retailer.

The appeal to the General Court

Unsatisfied, the applicant appealed, arguing that the relevant public were specialist consumers, namely golf players with a high degree of attention. The General Court dismissed this argument and upheld the earlier finding that the relevant public was the public at large with an average degree of attention.

It also upheld the Board of Appeal's findings of identity and similarity between umbrellas and parasols and golf umbrellas, in light of the fact that both are included in the same class of goods and serve the same purpose. The Court also commented that "the fact that the goods at issue are not sold in the same outlets is a detail that does not in itself suffice for a finding that the goods are not similar".

In relation to luggage and bags and golf bags and caddy bags, the Court looked to their nature, purpose and the fact that the goods are aimed at the same consumer and available at the same retail outlets to uphold a finding of similarity. A similar position was taken in relation to clothing and golf gloves given that they may also be sold in the same retail outlets.

The Board's conclusion that the contested mark was similar to the earlier mark was upheld, although the General Court took a more nuanced approach to this finding. It held that neither LILI nor TIGRESSE played an independent and distinctive role in the contested mark, but this ultimately did not detract from a finding of visual, phonetic and conceptual similarity between the marks.

The applicant's final argument that TIGRESSE was of lower distinctive character given that several registrations exist for similar marks on the EUIPO Register was also rejected by the General Court.

The mere fact that similar marks exist on the Register does not mean that there is an absence of a likelihood of confusion on the part of the relevant public, and no evidence was put forward by the applicant to show that these marks do in fact co-exist in the marketplace.

The General Court therefore dismissed the appeal.

Key takeaways

This case serves as a useful reminder that goods need not be in the same class in order for there to be a finding of similarity between them. The EUIPO will look at the nature, purpose, consumers and respective trade channels of the goods at issue, as well as whether they are in competition with, or complementary to, each other to come to a decision on similarity.

Case ref: T-105/18Julia King