Very common forenames and surnames

GvEA, 10 december 2008, zaak T-228/06, Giorgio Beverly Hills tegen OHIM / WHG Westdeutsche Handelsgesellschaft mbH (Nederlandse vertaling nog niet beschikbaar)

Gemeenschapsmerkenrecht. Oppositieprocedure  o.g.v. ouder Duits woordmerk GIORGIO (kleding) tegen gemeenschapswoordmerkaanvrage GIORGIO BEVERLY HILLS (kleding). Gerecht vernietigt beslissing OHIM en wijst de oppositie af. "(...) In the absence of any enhanced distinctiveness through use of the earlier mark, the consumer will not infer from the use of the forename Giorgio the existence of an economic link between all the proprietors of marks containing that forename"

“28. As regards the visual similarity of the signs at issue, it must be noted that the mark applied for is three times longer than the earlier mark. Admittedly, the first component of word marks may be more likely to catch the consumer’s attention than the following components. However, that consideration cannot apply in all cases. It cannot, in any event, call into question the fact that it is necessary to take account of the overall impression given by the marks at issue when examining their similarity, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

29. The same applies from the phonetic point of view, in view of the fact that the mark applied for will be pronounced in six syllables (‘gior-gio-be-ver-ly-hills’), whereas the earlier mark contains only two syllables (‘gior-gio’).

30. As regards the conceptual comparison of the conflicting signs, as was stated at paragraph 25 above, the words ‘beverly hills’ in the mark applied for refer to a particular geographical place, with which the target public is familiar, and are not descriptive of the goods concerned. Those words have a strong semantic value which, combined with that of the masculine forename Giorgio, produces a whole that is conceptually different from the earlier mark (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 49).

31. Furthermore, in a business sector such as that of clothing, in which it is common to use signs consisting of forenames and surnames, and in particular Italian forenames and surnames, it may be assumed, as a general rule, that very common forenames and surnames will be used more frequently in the course of trade than unusual forenames and surnames. Accordingly, and in the absence of any enhanced distinctiveness through use of the earlier mark, the consumer will not infer from the use of the forename Giorgio the existence of an economic link between all the proprietors of marks containing that forename.

32. It follows that the similarities between the two marks in question cannot outweigh the differences between them, which create a different overall impression.

33. Accordingly, even though there is similarity between the goods covered by the conflicting marks in this case, the visual, phonetic and conceptual differences between the signs in question constitute, in particular in the light of the findings in paragraphs 30 and 31 above, sufficient grounds for holding that there is no likelihood of confusion in the mind of the relevant public (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 52).

Lees het arrest hier.