ITMA 322 APRIL 2005

fully registered if there were an additional element to
support it, which again cannot be phonetically or conceptually
identical or similar to any other marks. The
word APOLLO is the name of a Roman god and
EXCEL is laudatory of the goods. I believe that these
Pass the dictionary, would you?
CASE COMMENTS
terms should be left free for others traders to use
them to describe their goods/services.
Remya Suresh, Ravindran Associates, Singapore,
remya@ipravi.com
Decision O-253-05 GA Modefine’s Opposition (Trade Marks Registry) 12 September 2005
The review of European case law in this decision of
the Appointed Person Geoffrey Hobbs QC rejecting
an opposition to an application for UK protection for
the word mark LE SPOSE DI GIO’ demonstrates that
an international mark will not be refused protection
in the UK merely because it is descriptive in the language
of another EU member state and that the UK
Registry will be slow to infer confusion between
opposing marks from their descriptiveness in another
language. However, as we shall see, that does preclude
other elements from rendering opposing word
marks in a foreign language from being sufficiently
similar so as to give rise to a likelihood of confusion.
Background
On 16 November 2000 Di Gio’ Srl requested protection
in the UK for the international trade mark LE
SPOSE DI GIO’ in relation to clothing of all types,
including bridal gowns, formal wear etc. The request
was opposed by GA Modefine SA, who owned the
earlier Community trade marks ACQUA DI GIO’ and
GIO’, on the grounds that because of the similarities
in the marks and in the goods there existed a likelihood
of confusion under s 5(2)(b) of the Trade Marks
Act 1994.
In allowing the opposition, the hearing officer
rejected Di Gio’s claims that GIO’ was a well-known
trade mark synonymous with GIORGIO ARMANI.
On the basis that the mark was used mainly in relation
to websites with the suffixes .com and .it and
Italian language magazines in circulation in the UK,
the hearing officer held that the mark was primarily
used in a context requiring familiarity with the Italian
language and that the relevant public therefore consisted
of Italian speakers in the UK. In his view, LE
SPOSE would be taken as descriptive of the goods in
question and, although ACQUA DI GIO’ and LE
SPOSE DI GIO’ differed in their first elements, that
difference was counterbalanced, to an extent, by the
descriptive nature of those elements. He concluded
that consumers would be led to believe that the goods
sold under both marks originated from the same
source.
Grounds of appeal
Di Gio’ appealed on the basis that the hearing officer
should not have taken into account that LE SPOSE
was likely to be taken as descriptive by those whose
exposure to the mark was through the medium of
Italian magazines circulating in the UK; nor should he
have concluded that the importance of the DI GIO’
element of the mark had been actively made known
to consumers. Di Gio’ contended that the hearing officer
had no adequate reason to conclude that the average
consumer would understand LE SPOSE to be
descriptive. In their view, the hearing officer was
wrong to have given any weight to the fact that the
use of the mark LE SPOSE DI GIO’ had taken place in
an Italian context.
The Appointed Person’s approach
The Appointed Person dismissed the appeal, although
he did not agree entirely with the hearing officer’s
reasoning, particularly the view that the relevant public
would be familiar with Italian. He noted that the
ECJ had confirmed that, when assessing requests for
protection of a trade mark at a national level, it was
necessary to look at social, linguistic and cultural differences
between member states (see Estée Lauder
Cosmetics GmbH v Lancaster Group GmbH [2000] ECR I-
1117). It was not correct to assume that refusal or
acceptance of registration in one member state was
enough to justify similar treatment in another. He
noted that the relevant language for the purpose of
testing whether a word mark is acceptable for registration
is the officially recognised national and any
regional languages of the territory for which protection
has been sought (see POSTKANTOOR [2004]
ETMR 57). Hence the approach taken by the Court of
First Instance in Case T- 286/02 Oriental Kitchen v
OHIM when considering whether the mark KIAP
MOU conflicted with earlier registrations of the word
MOU, which in Laotian and Thai happens to mean
“pork” whilst KIAP means “crispy”. This was that no
account need be taken of the applicant’s assertion that
the goods referred to in the application were intended
for clientele of Chinese of Indochinese origin living in
Western Europe.
It was clear to Geoffrey Hobbs that the same
approach should be taken in the current case. In the
light of Oriental Kitchen (and also Case C-3/03 P
Matratzen v OHIM), he concluded that in principle it
is impermissible for English equivalents of foreign
words to be used for the purpose of testing issues
relating to the distinctiveness, descriptiveness or
deceptiveness of such words in the UK in the absence
of good reason for thinking significant proportion of
the relevant, predominantly Anglophone, public
would understand their meaning.
Decision
Having said all that, Geoffrey Hobbs still found the
opposing marks sufficiently similar as to give rise to a
Continued on page 18
December 2005 ITMA Review 17