The eagle has landed

Yet another trademark case (a quite fashionable one), while still nothing is currently surfacing at the FPC.

Case No. HG 17 77 | Decision of 9 November 2018

As already reported in the newspaper ‘Der Bund’ on 19 December 2018, the Swiss watch manufacturer Glycine Watch SA was ordered to abstain from using its current logo because it could be confused with the logo of the luxury label Giorgio Armani.

Glycine had been distributing and promoting its watches under its old label already for quite a long time, and the old logo had not been objected to by Armani. But Armani felt uncomfortable with Glycine’s new logo that had been introduced in 2015. It is the design of the crown that had been changed: The crown seemingly got wings … — or is it an eagle?

Glycine had sought trademark protection for both the old and the new logo, as follows:

P-377813
672806

This is how the different Glycine logos appeared on watches, compared to an Armani watch:

Now, are Glycine’s new logo and Armani’s eagle logo confusingly similar?

Armani invoked the following trademarks:

2P-449697
2P-450913
P-501934
P-499717
2P-345300 ARMANI

Armani considered that Glycine’s new logo would create a likelihood of confusion with its own brand. After having sent warning letters to Invicta Watch Company of America, Inc. (the American parent company of Glycine Watch SA) and also directly to Glycine Watch SA, Armani finally brought an action before the Commercial Court Berne. Armani requested that Glycine Watch SA be ordered to abstain from using the stylised ‘wing crown’ logo and the word ‘AIRMAN’, based on both its earlier trademark rights and the Swiss Act against Unfair Competition (UCA).

The Commercial Court Berne indeed forbid the use of the logo

with and w/o the additional word ‘AIRMAN’. An appeal is currently pending at the Supreme Court.

It is always interesting to compare decisions of different courts and offices. Armani had also filed an opposition against the corresponding European Union trademark no. 015910301 with the EUIPO, based on its older trademark no. 015743891.

015910301
015743891

The EUIPO rejected Armani’s opposition (case no. B 2 832 882); see the decision here. An appeal is currently still pending.

While the case before the EUIPO was an opposition and the one before the Commercial Court Berne was a trademark infringement case, both had to assess similar issues. The Commercial Court Berne took notice of the EUIPO’s earlier decision (¶34.3.5), but did not agree in respect of the similarity of the signs and the degree of brand awareness.

The Opposition Division of the EUIPO had concluded that insufficient evidence had been submitted to support the assumption of a well-known mark. Consequently, it considered the distinctiveness of Armani’s mark as just normal. As to the similarity of the signs, the EUIPO held (¶e, fourth paragraph) that

[…] the distinctive verbal element ‘GLYCINE’ is of primary importance and the figurative element is of less impact. […], the presence of the term ‘GLYCINE’, on goods bearing the contested mark, in conjunction with a markedly different bird device is sufficient to avoid confusion.

In striking contrast, the Commercial Court Berne concluded that the plaintiff’s trademarks were indeed well-known trademarks, with an extended scope also for watches (¶31.3.3):

The Court considers the reputation of the applicant’s marks […] for fashion to be notorious. […] Furthermore, the Court assumes that the resulting extended scope of protection must also be affirmed for watches, as very common fashion accessories.

The Commercial Court Berne neither agreed with the EUIPO’s assessment of similiarity of the signs, but rather applied the regular principle that even the addition of an entirely different word element does not alter the similarity of the signs in the case of an identical or only slightly altered adoption of the dominant figurative element; ¶¶34.2.2, 34.3.4.

Despite the size of the word element, the figurative element is better remembered in this case because, due to its visual similarity, it evokes a reflexive association with the plaintiff’s well-known eagle marks and is thus characteristic of the overall impression.

It will be interesting to follow the further course of the proceedings at the appeal stage, both at the Swiss Supreme Court and the EUIPO.

Reported by Thorsten MÜLL and Martin WILMING

BIBLIOGRAPHY

Case No. HG 17 77 | Decision of 9 November 2018

Giorgio Armani S.p.A.
./.
Glycine Watch SA

Panel of Judges:

  • Christian JOSI
  • Alexander PFISTER
  • Annemarie LEHMANN

Court Clerk:

  • Iris KÄMPFEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

FULL TEXT DECISION*

Commercial Court Berne
Case HG 17 77

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*Kindly provided by Andrea MONDINI.

FULL TEXT DECISION

EUIPO Opposition Division
Case B 2 832 882

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