The art of confusion: Shop Art v Art

In July 2013, Manufacture Daddato SpA ( MD) applied to register “ SHOP * ART” as a European Union Trade Mark for goods in classes 18 (leather and bags of leather) and 25 (clothing, footwear and headgear). The Art Company B&S, SA ( AC) opposed all goods covered by the application, relying on its EUTM for “ * art” in classes 18 and 25 and a Spanish registration for “* art” in class 25. Both had broad specifications.

For reasons of procedural efficiency, the Opposition Division considered the opposition only insofar as it was based on AC’s EUTM. On the basis of visual, conceptual and phonetic ‘coincidences’, it deemed the marks similar. It also found that the goods at issue were identical. The opposition was therefore upheld.

AC appealed this decision to the First Board of Appeal ( BoA). In a very peculiar assessment of the facts, it annulled the decision of the Opposition Division.

The BoA found the respective goods identical, which was not surprising. However, in assessing similarity between the marks, the BoA found no visual or phonetic similarity, even though it was acknowledged that there was a common syllable, and no conceptual similarity, reasoning that AC’s mark referred to the concept of art in general, whereas MD’s mark evoked the narrower concept of specific art. The BoA noted also that the visual analysis of the marks was the most important, as the relevant public would encounter the goods in shops. In assessing likelihood of confusion, the BoA concluded that “art” had a low level of distinctive character and so the relevant public would focus on the other elements of the marks and thus “shop”, although similarly weak, would not be ignored. The BoA found that there was no likelihood of confusion and thus annulled the decision of the Opposition Division.

On further appeal, the General Court reversed the somewhat bizarre finding of the BoA. The Court considered the marks visually and phonetically similar to an average degree, and conceptually also similar. Coupled with the identity of the goods, which offset the lower degree of similarity between the marks, ultimately there was a likelihood of confusion and the BoA’s decision was annulled.

The path this case took was more surprising than its outcome. Nevertheless, the decision is a reminder that there can still be a likelihood of confusion between short marks that start differently, where one mark is contained within the other and the goods and services are identical or highly similar.

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