Nike wins eyewear logo battle against Multiópticas

Last 12 of July, the General Court dismissed the appeal filed by Multiópticas against Nike Innovative CV in Case T-487/22. Multiópticas had opposed the registration of a trade mark for the sale of eyewear filed by the sporting goods giant because of the alleged similarity with its earlier signs.

Background to the dispute

On 19 November 2019, Nike Innovate CV filed an application for registration of an EU trade mark with EUIPO in respect of the figurative sign linked herefor the services in Class 35 of the Nice Classification corresponding to the following description: ‘Retail store services in relation to eyewear; and online retail ordering services by means of a global computer network in relation to eyewear’.

On 15 April 2020, Multiópticas (“the applicant”) filed a notice of opposition to registration of the mark applied for on the grounds of Article 8(1)(b) and (5) of EUTMR. The opposition was based on the following earlier marks:

The EU figurative mark registered on 29 July 2009 under No 7491095 covering the services in Class 35

The EU figurative mark registered on 29 July 2009 under No 7490923 covering the services in Class 35

The EU figurative mark registered on 7 October 2013 under No 11810595 covering the services in Class 35

The Spanish figurative mark registered on 14 June 2013 under reference M3066116 designation the services in Class 35

On 7 September 2021, the Opposition Division rejected the opposition under Article 8(1)(b) and (5) of EUTMR. On 13 October 2021, the applicant filed an appeal with EUIPO against the decision of the Opposition Division. By the contested decision, the Board of Appeal dismissed the appeal, holding that the signs at issue were not similar on the grounds of Article 8(1)(b) EUTMR. Having recalled that the conditions set out in Article 8(5) of EUTMR were cumulative and that one of them, in the present case the similarity of the signs at issue, was not satisfied, it also rejected the opposition on the basis of that provision. The applicant appealed to the General Court seeking the annulment of the contested decision alleging infringement of Article 8(5) of EUTMR (about grounds for opposition linked to the earlier trade mark having reputation). It submitted that there is a certain similarity between the signs at issue, so the Board of Appeal should have assessed whether the conditions laid down in that provision were satisfied.

Judgement of the General Court

First of all, the General Court stated that, for an earlier trade mark to be afforded the broader protection under Article 8(5) of EUTMR, the following cumulative conditions must be fulfilled: the earlier trade mark which is claimed to have a reputation must be registered; that mark and the mark applied for must be identical or similar; it must have a reputation in the EU (earlier EU trade mark) or in the Member State concerned (earlier national trade mark); the use of the mark applied for must take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trade mark.

The applicant submitted that the degree of similarity required in the context of each of those provisions is different. Whereas Article 8(1)(b) requires similarity giving rise to a likelihood of confusion, in the case of Article 8(5), such a likelihood is not necessary for protection. The General Court clarified that the criteria for assessing the similarity between the marks are the same whether it is for refusing registration due to likelihood of confusion (Article 8(1)(b)) or for refusing due to damage to the reputation of an earlier mark (Article 8(5)). In both cases, similarity requires visual, phonetic or conceptual elements, so that the marks at issue are at least partially identical from the point of view of the relevant public.

Visually, the applicant argued that the mark applied for could be seen as both the letter “n” and a lower case “m”, with the circle resembling a lower case “o”, all in bold black, which are key features of the earlier marks. It argued that, even if the similarity is minimal, the relevant public will still associate the two marks since, as the earlier marks form a family with common elements, it is to be expected that they will take various shapes. The General Court ruled that the mark applied for is purely figurative because it lacks distinct lines or outlines resembling letters. It consists of two solid black geometric shapes: a square with a rounded upper section and a basic circle, so that the average consumer will not link these shapes to any letter combination but will perceive the mark as a fanciful figurative design without any word element. By contrast, the earlier marks relied on in support of the opposition all clearly show word elements, namely the letter ‘m’ juxtaposed with the letter ‘o’ with an accent, so that the relevant public will immediately perceive those word elements as such.

On a phonetic level, the applicant submitted that the mark applied for is phonetically similar to the earlier marks in so far as it retains the pronunciation of the average Spanish consumer, namely “no” or “mo”. The General Court considered the phonetic comparison to be irrelevant when assessing the similarity of a figurative mark without words with another mark as wordless figurative marks are, by their nature, not pronounceable. The court stated that, as the public will not identify the letters 'n' and 'o' in the mark applied for, it will not pronounce them either, making the phonetic comparison irrelevant.

Conceptually, the General Court stated that, as neither of the signs at issue has a meaning taken as a whole, a conceptual comparison is not possible. The General Court confirmed the decision of the Board of Appeal by holding that the signs at issue were not similar -not even a lower degree-, but dissimilar.

Since the conditions laid down in Article 8(5) of EUTMR are cumulative, one of them not being fulfilled (the similarity between the signs), the General Court held that the single plea raised by the applicant must be rejected. It therefore dismissed the action in its entirety. As a result, Multiópticas could not succeed in opposing Nike’s registration.