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It is all about the wings for Giorgio Armani

Written by Mark Reed on 11 February 2019

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A likelihood of confusion was at the forefront of the minds of Giorgio Armani lawyers in an attempt to stop a mark being registered by Invicta Watch Company.

The European Union Intellectual Property Office had its Board of Appeal consider the earlier decision that there was in fact no similarity to give rise to any confusion between the two marks. This decision was upheld on the basis that the Invicta mark was visually, aurally and conceptually different on all levels.

The initial filing was done in 2016 by Invicta Watch Company under the classes relating to eyewear, watches, luggage and clothing with the mark in particular using the word ‘glycine’. The mark was presented in capital letter which were black and in bold, and there were horizontal lines of receding lengths above the middle three letters, apparently similar to an earlier mark owned by Giorgio Armani of this description.

Giorgio Armani argued that there is an enhanced degree of similarity between its earlier mark and Invicta’s applied-for mark, because although the word ‘glycine’ is not present in both marks, they do both depict a stylised bird with outspread wings. The EUIPO Board of Appeal said that there was no phonetic comparison between the two after hearing the following submissions.

Giorgio Armani claimed that the word element could not play a significant part in the decision, nor could a phonetic comparison because the Giorgio Armani earlier mark did not have a word element, and therefore the word element cannot play a dominant role in comparing the marks and that the distinctiveness of the Armani mark has an even more enhanced degree due to the long standing and extensive use that the Armani mark has throughout the EU.

This argument was rebutted by Invicta Watch Company by claiming that its mark is clearly dominated by the word ‘GLYCINE’. Invicta then went on to argue that the use of winged devices is widely used in fashion and watches and then named a number of brands that use winged marks and that the use of the word element as well, this would not create a likelihood of confusion. A deciding factor for the EUIPO Board of Appeal was the argument which was submitted that when a mark is composed of both figurative and word elements, the word elements are more distinctive because a consumer will more readily refer to the goods in question by quoting the word, than by describing the figurative element.

Decision made and Board of Appeal held that the overall impression of the two marks is that they are completely different.

It is interesting to note that when the Intellectual Property Office has to make a decision on likelihood of confusion, there are varying factors they will consider as is shown above.
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