EUIPO finds likelihood of confusion between STUDIO GHIBLI and GHIBLI

13 November 2024

Richard Milchior    

– Italian fashion company Ghibli SRL opposed the figurative mark STUDIO GHIBLI in Classes 18 and 25

– Studio Ghibli argued that the figurative element represented the “well-known, unusual and highly distinctive cartoon character named Totoro”, but the Opposition Division considered that this was not a well-known fact

– The signs were visually similar to a slightly below-average degree, aurally similar to an average degree and conceptually similar to an average degree for part of the public

On 19 September 2024 the EUIPO’s Opposition Division issued its decision in Opposition Nо B 3 125 202, which concerned Kabushiki Kaisha Studio Ghibli’s application for the mark STUDIO GHIBLI. 

Background

 

The opposition was based on EUTM No 17,931,716 (depicted below) in Classes 18 and 25, and claimed the existence of a likelihood of confusion:

 

The Opposition Division listed the goods concerned and examined whether they were identical or similar to the goods covered by the opponent’s mark. The goods “pouches” and “charm bags” were included in the category of “bags” protected by the opponent’s mark in Class 18 and found identical. More surprisingly, the “vanity cases, not fitted” were considered to be included in, or overlapping with, the “cosmetics purses” of the opponent and found identical. The “umbrella and their parts” were not considered identical or similar to the goods protected by the opponent’s mark in Classes 18 or 25.

Some products were also considered identical or similar to those protected by the opponent’s mark in Class 25. According to that line of reasoning, the “clothing” applied for by the applicant included the “gloves” of the opponent. The contested “swimming caps (bathing caps)”, “nightcaps” and “headgear for wear” were included in, or overlapped with, the opponent’s “headgear” and were found identical. The applicant’s “gloves” and “mittens” were identical to the “gloves” of the opponent, and the “bandanas” and “earmuffs” were similar to “headgear” since they had the same purpose. Strangely, the “shoes and boots other than special footwear (footwear for sports); Japanese-style wooden clogs (Geta); Japanese-style sandals (Zori)” were considered similar to “headgear” since they cover various parts of the body and are found in the same retail outlets. The rest of the contested could not be considered as “dissimilar” and, consequently, all the contested goods were at least similar to a low degree to the opponent’s gloves, which are part of “clothing”.

Comparison of the signs

The Opposition Division first mentioned that the verbal component ‘Ghibli’ could be considered as referring to a hot or dry wind for a non-negligible part of the English, German and Italian-speaking public. It then stated that the verbal component ‘studio’ is used in the same or similar forms in all the EU languages; therefore, it would be recognised throughout the European Union and associated by the relevant public with the places where the relevant goods, such as clothing, are created or designed.

The non-European characters present in the contested sign would be perceived as a figurative element without any meaning, therefore having a normal degree of distinctiveness. The applicant had explained that the figurative element was a “well-known, unusual and distinctive cartoon character named Totoro”. This was not considered as a well-known fact, which is defined as a fact which is “likely to be known by anyone or which may be learned from generally accessible sources”. Therefore, this part of the sign was considered distinctive to a normal degree. 

Nevertheless, the Opposition Division considered that neither sign had elements that could be considered clearly more dominant than others. It further held that the contested sign’s “stylisation was not particularly original to the extent that it would divert the consumer’s attention from the verbal element”. That being said, it decided that, visually, the signs coincided in the verbal element ‘Ghibli’ and differed in the verbal element ‘studio’, which was weak – if distinctive at all. The signs were thus found similar to a slightly below-average degree. 

Aurally, the signs coincided in the sound of the element ‘Ghibli’ and differed in ‘studio’, which once again was found to be weak. They were thus similar to an average degree. Conceptually, the Opposition Division found that the verbal elements were conceptually similar to an average degree, but only for the part of the public who perceived a meaning in the verbal component ‘Ghibli’.

Distinctiveness of the earlier mark 

The Opposition Division did not consider whether the earlier mark was highly distinctive, since this was not deemed necessary for reasons of procedural economy. It held that the assessment of the distinctiveness of the earlier mark would rest on its distinctiveness per se.

Global assessment 

The Opposition Division summarised that the contested goods were partly identical and partly similar, and that the earlier mark enjoyed a normal degree of distinctiveness. The signs were visually similar to a slightly below-average degree, aurally similar to an average degree and conceptually similar to an average degree for part of the public. Only the verbal element ‘Ghibli’ was taken into consideration, while the other verbal and figurative elements were considered insufficient to counteract the similarity between the signs and exclude a likelihood of confusion.

The Opposition Division referred to the interdependence principle, according to which a lesser degree of interdependence between the marks may be offset by a greater degree of similarity between the goods and vice versa (see Canon (Case C-39/97). Here, the similarity between the signs counteracted the low degree of similarity between the goods. A likelihood of confusion existed, and the opposition was upheld for the goods found to be identical or similar.

Comment

Part of the analysis concerning the similarity of the goods appears far-fetched; however, as it seems that there will be no appeal, this aspect will not be discussed further. 

It also appears that the members of the Opposition Division were not from the right generation, or did not have children, since they had never heard of the character Totoro. A simple Google search generates over 27 million results!

It is unfortunate that there seemingly will be no appeal, as several points of the decision are disputable. 

This article first appeared on WTR Daily, part of World Trademark Review, in October 2024. For further information, please go to www.worldtrademarkreview.com.