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13 November 2024 <\/span><\/p>\n <\/p>\n Richard Milchior<\/a>\u00a0 \u00a0\u00a0<\/span><\/p>\n <\/p>\n – Italian fashion company Ghibli SRL opposed the figurative mark STUDIO GHIBLI in Classes 18 and 25<\/span><\/p>\n – Studio Ghibli argued that the figurative element represented the \u201cwell-known, unusual and highly distinctive cartoon character named Totoro\u201d, but the Opposition Division considered that this was not a well-known fact<\/span><\/p>\n – 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<\/span><\/p>\n On 19 September 2024 the EUIPO\u2019s Opposition Division issued its decision in\u00a0Opposition N\u043e B 3 125 202<\/a>, which concerned Kabushiki Kaisha Studio Ghibli\u2019s application for the mark STUDIO GHIBLI.\u00a0<\/span><\/p>\n \u00a0<\/p>\n On 29 June 2020 Italian fashion company Ghibli SRL filed an opposition against Application\u00a0No 18,193,928 (depicted below), concerning the goods in Classes\u00a018 and 25:<\/span><\/p>\n<\/div>\n <\/p>\n The opposition was based on EUTM\u00a0No 17,931,716 (depicted below) in Classes\u00a018 and 25, and claimed the existence of a likelihood of confusion:<\/span><\/p>\n <\/p>\n<\/div>\n<\/div>\n <\/p>\n Comparison of the goods<\/span><\/p>\n<\/div>\n The Opposition Division listed the goods concerned and examined whether they were identical or similar to the goods covered by the opponent\u2019s mark. The goods \u201cpouches\u201d and \u201ccharm bags\u201d were included in the category of \u201cbags\u201d protected by the opponent\u2019s mark in Class 18 and found identical. More surprisingly, the \u201cvanity cases, not fitted\u201d were considered to be included in, or overlapping with, the \u201ccosmetics purses\u201d of the opponent and found identical. The \u201cumbrella and their parts\u201d were not considered identical or similar to the goods protected by the opponent\u2019s mark in Classes 18 or 25.<\/span><\/p>\n Some products were also considered identical or similar to those protected by the opponent\u2019s mark in Class\u00a025. According to that line of reasoning, the \u201cclothing\u201d applied for by the applicant included the \u201cgloves\u201d of the opponent. The contested \u201cswimming caps (bathing caps)\u201d, \u201cnightcaps\u201d and \u201cheadgear for wear\u201d were included in, or overlapped with, the opponent\u2019s \u201cheadgear\u201d and were found identical. The applicant\u2019s \u201cgloves\u201d and \u201cmittens\u201d were identical to the \u201cgloves\u201d of the opponent, and the \u201cbandanas\u201d and \u201cearmuffs\u201d were similar to \u201cheadgear\u201d since they had the same purpose. Strangely, the \u201cshoes and boots other than special footwear (footwear for sports); Japanese-style wooden clogs (Geta); Japanese-style sandals (Zori)\u201d were considered similar to \u201cheadgear\u201d 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 \u201cdissimilar\u201d and, consequently, all the contested goods were at least similar to a low degree to the opponent\u2019s gloves, which are part of \u201cclothing\u201d.<\/span><\/p>\n Comparison of the signs<\/span><\/p>\n The Opposition Division first mentioned that the verbal component \u2018Ghibli\u2019 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 \u2018studio\u2019 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.<\/span><\/p>\n 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 \u201cwell-known, unusual and distinctive cartoon character named Totoro\u201d. This was not considered as a well-known fact, which is defined as a fact which is \u201clikely to be known by anyone or which may be learned from generally accessible sources\u201d. Therefore, this part of the sign was considered distinctive to a normal degree.\u00a0<\/span><\/p>\n 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\u2019s \u201cstylisation was not particularly original to the extent that it would divert the consumer\u2019s attention from the verbal element\u201d. That being said, it decided that, visually, the signs coincided in the verbal element \u2018Ghibli\u2019 and differed in the verbal element \u2018studio\u2019, which was weak\u00a0\u2013 if distinctive at all. The signs were thus found similar to a slightly below-average degree.\u00a0<\/span><\/p>\n Aurally, the signs coincided in the sound of the element \u2018Ghibli\u2019 and differed in \u2018studio\u2019, 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 \u2018Ghibli\u2019.<\/span><\/p>\n Distinctiveness of the earlier mark\u00a0<\/span><\/p>\n 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\u00a0per se<\/em>.<\/span><\/p>\n Global assessment\u00a0<\/span><\/p>\n 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 \u2018Ghibli\u2019 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.<\/span><\/p>\n 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\u00a0vice versa<\/em>\u00a0(see\u00a0Canon\u00a0<\/em>(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.<\/span><\/p>\n \u00a0<\/p>\n \u00a0<\/p>\n 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.\u00a0<\/span><\/p>\n 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!<\/span><\/p>\n It is unfortunate that there seemingly will be no appeal, as several points of the decision are disputable.\u00a0<\/span><\/p>\n <\/p>\n![\"Richard](\"http:\/\/www.herald-avocats.com\/wp-content\/uploads\/2018\/12\/MILCHIOR-Richard-e1662040208539-150x150.jpg\")
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