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Figurative mark AP found to be confusingly similar to AD ALAIN DELON

-Adid Alain Delon International Distribution opposed the registration of the figurative mark AP in Class 25 based on its earlier figurative marks AD ALAIN DELON and AD

-The Appeals Division concluded that there was a likelihood of confusion, since the marks were similar and covered identical and similar goods

-The marks created a similar overall impression, since they both featured a highly similar dominant element

Background

On 6 March 2019 Ausra Povilaitiene, a natural person residing in Lithuania, applied for the registration of the figurative trademark AP (No 2019 0387) for clothing in Class 25:

On 25 July 2019 Adid Alain Delon International Distribution SA (Switzerland) filed an opposition with the Appeals Division based on its earlier international figurative trademarks AD ALAIN DELON (Registration No 0450854) and AD (Registration No 0656298B) designating the European Union. Both marks (depicted below) were registered in various classes, including for goods in Class 25.

The opponent stated that the opposed trademark AP had been registered in breach of Article 8(1)(2) of the Law on Trademarks of the Republic of Lithuania, since it was confusingly similar to its earlier trademarks.

The opponent argued that its AD mark consisted of a graphic composition of two letters, ‘A’ and ‘D’, which created the image of an open circle, formed by outer curved lines and internal vertical lines. An additional horizontal line between the two vertical lines formed the letter ‘A’. The earlier trademark AD ALAIN DELON contained, in addition to the abovementioned figurative element, the verbal element ‘Alain Delon’ (the name of a famous French actor) and the signature of the actor in the middle of the mark.

Further, the opponent pointed out that the opposed mark AP consisted of a stylised composition with two curved outer lines and two vertical lines. The curved outer lines created the image of an unfinished circle, while the horizontal line seemed to form a combination of the letters ‘AP’ or ‘AD’.

Decision

The Appeals Division stated that the compared marks created a similar overall impression, since they both featured a highly similar dominant element – namely, a stylised graphic composition. Such composition consisted of very similar geometric shapes – two outer curves and two vertical lines – giving the impression of an unfinished circle. Both marks also contained a single horizontal line; while that line was placed differently in the marks, the overall composition had a high degree of similarity. The Appeals Division agreed with the opponent that the differences between the marks were small, since consumers perceive a mark as a whole and do not analyse its individual details. In addition, consumers could not compare the marks at issue directly, but relied on imperfect images, so the differences between the marks were not decisive in assessing their similarity.

The Appeals Division found that, phonetically, the marks were similar or identical, depending on how the average consumer would interpret the graphic elements, which may represent the letters ‘AD’ or ‘AP’. Depending on this, the figurative elements could be pronounced identically ([ad]) or similarly ([ad] and [ap]). Semantically, the marks could not be compared as the graphic compositions had no clear and obvious meaning for the average consumer.

In the light of the foregoing, the Appeals Division concluded that the opposed mark AP was confusingly similar to the earlier marks.

With regard to the goods covered by the marks, the Appeals Division stated that they were identical and similar. The Appeals Division noted that, in assessing the similarity of the goods, the comparison must be made based on the goods for which the marks are registered, and not those for which the marks are used.

The Appeals Division thus concluded that there was a likelihood of confusion, since the marks were similar and covered identical and similar goods.

Next steps

The term to appeal the decision of the Appeals Division will expire on 5 August 2020. If no appeal is filed, the decision of the Appeals Division will become final.

This article first appeared on WTR Daily, part of World Trademark Review, in June, 2020. For further information, please go to www.worldtrademarkreview.com

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