On February 8, 2019, the General Court of the European Union ruled (T-647/17– French version) that the figurative trademark “CHIARA FERRAGNI” (displayed above) is not confusingly similar to the earlier registered word trademark “CHIARA”.
The case has come a long way. The company Serendipity Srl, of which Chiara Ferragni is a member, filed an application to register the sign above as a European Union Trademark. The application was opposed by CKL Holdings NV, claiming that the sign was too similar to their word trademark “CHIARA”, and thus would cause a likelihood of confusion. The Opposition Division of the EUIPO ruled in favor of CKL Holdings. So did the EUIPO’s Board of Appeal after Serendipity Srl filed an appeal against this decision. But recently the General Court decided otherwise.
The General Court has built up a detailed reasoning in comparing the two signs.
It started by stating that the trademark applied for constitutes a complex trademark, composed of both verbal and figurative elements: two verbal elements “CHIARA” and “FERRAGNI”, and a figurative element being a specifically stylized eye (§29). It pointed out that even though in general the average consumer will refer to products by citing their name, this does not mean that in the case of a complex trademark the verbal elements are always more distinctive than the figurative ones (§37). Moreover, regarding the CHIARA FERRAGNI trademark, it stated that the figurative element is as distinctive as the verbal elements. Because of its highly stylized character and its position above the verbal elements, the eye catches the attention of the average consumer rather than the verbal elements underneath.
Subsequently, the General Court proceeded with a more specific comparison.
Visually, the General Court found the similarity between the signs low (instead of average, as ruled by the EUIPO). It stated that the figurative element has a significant impact on the overall impression of the average consumer (§47). Regarding the verbal elements, it said that the divergent element “FERRAGNI” is visually more important than the similar element “CHIARA” (§48). It did not agree with the prior arguments of the EUIPO saying that the public generally pays more attention to the first part of a sign than to the last part.
Phonetically, the General Court found the similarity between the signs average or low (instead of above-average, as ruled by the EUIPO). Here again, it stated that the divergent element “FERRAGNI”, because of its length, is phonetically more important than the similar element “CHIARA” (§57). The verbal element “CHIARA” does not constitute the dominant part in the trademark applied for, and the General Court found there was no reason to believe that the dominant part “FERRAGNI” would not be pronounced (§58).
Conceptually, the General Court considered the similarity between the signs as non-existent (instead of neutral, as ruled by the EUIPO). It stated that a conceptual similarity shouldn’t be derived from the observation that two signs contain the same first name (§68). The trademark applied for identifies a unique and specific person, namely a member of the Ferragni family; this is not the case for CDKL Holdings’ trademark. Moreover, a last name generally has a more distinctive character than a first name, especially when it’s not very common, such as the name Ferragni in the Benelux territory. Therefore, the General Court stated the consumer will memorize the element “FERRAGNI” rather than the element “CHIARA” to distinguish the products (§70).
Finally, the General Court analyses the likelihood of confusion between the two signs. As the goods in question are generally sold in self-service stores, the visual similarity plays an important role in the overall assessment of the likelihood of confusion (§83). The General Court stated that the differences between the signs at issue, in particular the visual differences, provide sufficient grounds to rule out any likelihood of confusion on the part of the public (§86). The Court closed by saying the EUIPO made a mistake in its assessment of the likelihood of confusion.
This case is not the first win for Chiara Ferragni. In 2015, the IP Division of the Milan Court ruled the “flirting trademark” they display on their products possesses a sufficient degree of distinctiveness, rendering the depiction of an open and a winking eye as a “stylised and imaginative” representation.
For all questions on trademark issues, feel free to contact us:
Christine DEKEERSMAEKER Elisabeth VAN NERUM
Managing Partner Associate
+32 2 566 90 00 +32 2 566 90 00