In July 2024, the EUIPO rendered an interesting opposition decision. It considered whether real-world goods are similar to the retail of their virtual counterparts and in a world where technology is constantly evolving, this was definitely a question to be answered.

Background

First a little bit of background. In November 2022, an Italian Fashion retailer company called Vinicio S.R.L. (‘Vinicio’) filed an EUTM application to register the figurative mark  .In July 2023, Artessence FZC (‘Artessence’), a French company specialised in perfumes, opposed Vinicio’s application based on their earlier EUTM for .

The opposition was directed at all class 3 goods i.e. soaps, perfumes and cosmetics etc, and partially against retail services in Class 35.

The Class 35 services opposed included retail of soaps, perfumes, cosmetics, as well as retail of virtual soaps, perfumes, cosmetics etc.

Artessence relied upon perfumery and cosmetics etc in Class 3 and candle goods in class 4 to oppose based on Article 8(1)(b) EUTMR: a likelihood of confusion between the respective marks.

EUIPO’s decision

When comparing the goods and services, the EUIPO Opposition Division concluded (unsurprisingly) that all the goods in Class 3 and the Class 35 retail services for the same Class 3 goods covered by the EUTM application were similar or identical to perfumery and cosmetics etc in Class 3 covered in Artessence’s earlier mark.

However, the EUIPO Opposition Division found that class 35 retail of virtual cosmetics etc were dissimilar to perfumery and cosmetics etc in Class 3 and candle goods in class 4 covered by Artessence's earlier mark.

Indeed, it was found that, whilst the Class 3 goods covered by Artessence’s earlier mark and most of the goods subject of the earlier retail services are the real-world counterparts of the virtual goods that are covered by the contested retail services, this was not per se sufficient for a finding of similarity.

Due to the novelty of this technology, no market practices and facts related to virtual goods had been established that could lead the EUIPO to a finding of similarity. The EUIPO Opposition Division pointed out that it could only rely on well-known facts and in this case, “it is not a well-known fact whether it is customary to bring together and offer for sale virtual goods and their real-world counterparts through the same distribution channels”. As no evidence or arguments were provided by Artessence, the EUIPO had no choice but to conclude that these goods and services were dissimilar… at least for the time being!

When comparing the marks, the EUIPO decided to take the view of the French-speaking part of the public and concluded that the marks were aurally highly similar and visually similar to a below-average degree.

It then went on assessing the distinctiveness of the earlier mark. Whilst Artessence had claimed enhanced distinctiveness, the evidence filed by this party to prove this point was insufficient. Artessence had only filed a few undated screenshots from their website which did not show the extent of use or the market share of the trade mark. The distinctiveness of the earlier mark was therefore assessed as normal.

The EUIPO concluded that, whilst the public generally pays greater attention to the beginning of a mark than to the end, the examination of the marks’ similarity must take account of the overall impression given by those marks. In this case, it was found that the similarities between the marks towards the end of the signs could lead the consumers to be confused, and therefore, there was a finding of likelihood of confusion for the similar and identical goods and services.

Brand owner take aways

The finding of dissimilarity between the real-word goods and retail of their virtual counterparts may be at first surprising for some brand owners who are immersed in modern developments in the Metaverse, NFTs and artificial intelligence.

However, when facing goods/services comparisons concerning new technologies, it is reasonable not to rely on intellectual property offices to make assumptions. Brand owners need to collate and file sufficient evidence of current market practices to establish similarity between the relevant goods/services.

The assessment between the marks VINICIO and INITIO may also be surprising to some English speakers, who may be more inclined to see a low level of similarity but insufficient similarity for a likelihood of confusion. Brand owners should be reminded that a likelihood of confusion in any part of the EU is sufficient, and this is a key feature of the unitary character of the EUTM. In this case, the confusing similarity between the marks from the French speaker’s perspective was enough for the opponent’s case in respect of the identical and similar goods.

This decision emphasises the unitary character of the EU trade mark registration system and its advantages and disadvantages to brand owners. At Stobbs, we have many native speakers of EU languages who can support brand owners with achieving their commercial objectives.