THE CASE
The opposition was filed on behalf of the company “FIRST INVESTMENT BANK” JSC through the association of industrial property representatives – IP Consulting Ltd. The opposition was filed against the registration of a trademark with entry No. 162743 FIRST LADY AWARDS, verbal and based on the following earlier marks:
- National registration of a trademark with reg. No. 91147, applied for on 06.10.2014, registered on 05.05.2015 for goods and services in classes 9, 16, 36, 41 of the International Classification of Goods and Services.
- National registration of a trademark with reg. No. 91148, applied for on 06.10.2014, registered on 05.05.2015 for services in classes 35, 36 and 41 of the International Classification of Goods and Services.
Legal grounds
The opposition was submitted on the basis of Art. 12, para. 1, item 2 of the Law on Marks and Geographical Indications (LMGI), which prohibits the registration of a trademark identical or similar to an earlier trademark, in the presence of identity or similarity between the goods and services of the trademarks, when there is a likelihood of confusion among consumers, including the possibility of connection with the early trademark.
The cumulative factual composition of this norm requires the presence of:
- earlier mark;
- identity or similarity of the earlier mark to the process mark;
- identity or similarity of the goods/services of the earlier mark to the goods/services of the suit mark;
- existence of a likelihood of consumer confusion, including the possibility of association with the earlier mark.
- Earlier Rights
The date of application of the opponent’s trademarks – 06.10.2014 is earlier than the date of application of the process mark, namely 15.05.2021, which is why it is necessary to conclude that there are earlier rights within the meaning of Art. . 12, paragraph 2, item 1 LMGI. Therefore, the first element of the factual composition is satisfied.
2. Identity/similarity of goods and services
The similarity of the goods and/or services does not depend on a precisely defined, fixed number of factors and criteria that have the same importance in all cases considered.
Relevant factors when comparing goods and/or services are their nature, purpose, whether they are complementary or interchangeable, etc. (Decision Court of the European Union (CJEU), C-39/97 “Canon”, paragraph 23).
The services in class 35 of the process mark ‘advertising; updating advertising materials’ are identical to the same services in class 35 of the earlier mark with Reg. No. 91148 as they are indicated in identical terms.
Process mark services “production of audio-visual presentations for advertising purposes; preparation of advertisements; publication of advertising leaflets; interactive advertising; Internet indexing for commercial or advertising purposes; information services relating to advertising; online advertising on computer communication networks; online advertising on a computer network; online advertising on computer networks and websites; online advertising via computer communications networks; online advertisements; online advertising and marketing services; organizing and conducting promotional events; organization of advertising; pay per click advertising; preparation of advertising materials; providing models for advertisements; providing models for promotional purposes; placement of advertisements; providing advertising information; digital marketing; business promotional services’ are identical to the services for which protection is enjoyed by the earlier mark with Reg. No. 91148 ‘advertising, marketing‘. This is because the process mark seeks protection for different types of services that may fall into the general category already protected by the earlier mark.
3. Identity/similarity of signs
Visual similarity
According to the case law, a word mark is a mark which consists entirely of letters, words or word combinations written in printed symbols in a normal font, without a special graphic element (20/04/2005, T-211/03, Faber, EU:T: 2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). The protection that word mark registration provides applies to the word specified in the application for registration and not to the individual graphic or stylistic features that the mark may possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lowercase or uppercase letters. For word marks, the visual comparison is based on an analysis of the number and sequence of letters/characters, the position of the matching letters/symbols, the number of words and the structure of the characters (eg whether word elements are separated by spaces or hyphens).
The process mark is word and represents the word combination “FIRST LADY AWARDS” written in Latin letters.
The earlier mark with reg No. 91147 is combined. It includes the phrase “First Lady” written in slightly right-slanted Latin letters. Above the letter “F” is placed a figurative element – an image of a crown. The composition is placed on a white background. The earlier mark with Reg No. 91148 is also combined. It includes in its composition a composition identical to the stamp with reg. No. 91147, which is located in the upper part of the stamp. At its bottom, in very bold type, is written the phrase “FASHION’S NIGHT OUT”, the three words of which are placed one below the other, with left alignment.
When comparing the marks, it is clear that the word element “First Lady”, unique to the earlier mark with Reg. No. 91147, is found completely at the beginning of the word mark at trial. A difference is found in the additional word element “AWARDS” of the composition of the process mark, which has no analogue in the earlier marks. In addition, the word element “FASHION’S NIGHT OUT” from the composition of the earlier mark with Reg. No. 91148, as well as the figurative elements – crowns, have no analogue in the trial mark. The differences established in this way undoubtedly reduce the visual similarity between the competing marks, but are not able to eliminate it.
In view of the above and when examining the compared marks in their entirety, it is necessary to conclude that there is a visual similarity between them of a medium degree (in relation to an earlier mark with reg. No. 91148), respectively a high degree (earlier mark with reg. No. 91147).
Phonetic similarity
Phonetic similarity is determined by the length of words, the number of syllables, the number of matching sounds, mutual arrangement of the same or close sounds or sound combinations, characteristic features of the same parts of the word, taking into account the beginning of the sign.
The earlier mark reg No 91147 will be pronounced “first lady”.The earlier mark reg No 91148 will be pronounced “first lady fashions night out”. The process mark will be pronounced “first lady awards”.
There is a match of ten identical sounds, resp. in three syllables, in an identical sequence – FIRST LADY-DEE, insofar as the beginning of the word elements of the signs match completely. At the same time, the words “fashion night out” (from the earlier trade mark reg. No. 91148) and “awards” (from the suit trade mark) differ in their sound, as they do not share the same or similar syllables.
The foregoing necessitates the conclusion that between the trial mark and the earlier marks, considered in their entirety, there is a phonetic similarity of a medium degree (earlier mark No. 91148), respectively a high degree (earlier mark with reg. No. 91147), insofar as they share an identical beginning.
Semantic similarity
The semantic content of a brand is what it means, the image it creates. The assessment of semantic similarity is based on the meaning of the verbal elements of the mark, including in translation.
All three trademark share the common word element “first lady”, which is associated with the English language and translates as “first lady”. A “first lady” is the wife of the head of state (or possibly the wife of the prime minister) of a republican country.
The process mark also contains the word element “AWARDS”, which translates into Bulgarian as “awards”. The earlier mark with Reg. No. 91148 also contains the word element “FASHION’S NIGHT OUT”, or translated from English – “fashion night out”.
The above-quoted English words are among the common and used ones, incl. on the territory of our country, which is why they will be recognized and connected by the average Bulgarian consumer with their most popular and frequently used meanings, already cited above. The figurative element representing a crown, included in the composition of the earlier brands, only complements their already established meaning without altering it in any way.
Therefore, there is a high degree of semantic similarity between the opposing trademarks, in so far as they give rise to common images of a “first lady”.
4. Relevant users – degree of attention
According to the Court of Justice of the European Union, the average consumer is considered relatively well-informed, moderately observant and careful in his choice of purchase, not forgetting the fact that the level of attention changes depending on the relevant category of goods and/or services (Judgment CJC, C-342/97 “Lloyd”, paragraph 26).
At the same time, one must also take into account the fact that the average consumer does not always have the opportunity to make a direct comparison between the brands, which is why he has to trust the imperfect image preserved in his memory (Judgment CJEU, C-342/97 “Lloyd” , paragraph 26).
The specified definition of the category “average user” can also be interpreted in the context of the concept of “business circles” (“business users”). Regarding business circles, the terms “relatively well informed”, “moderately observant” and “careful in purchasing” often mean a higher degree of manifestation of the listed factors compared to the average consumer.
The services of classes 35 and 41 analyzed above are aimed at both the mass end user and professional business users. In this regard, the degree of attention will vary depending on the nature, purpose and cost of the services, but in general it can be assumed that it will be that which is characteristic of the average consumer who is considered to be well informed, moderately observant and careful when choosing to purchase.
In summary of the above, it is necessary to conclude that the cumulative factual composition of Art. 12, para. 1, item 2 of the LMGI is fulfilled, resp. opposition No BG/N/2021/162743-[11] dated 28.10.2021 against the registration of a trademark with entry No. 162743 FIRST LADY AWARDS, verbal, is well founded, therefore the registration of the process mark should be refused for all the services of classes 35 and 41 of the Nice Classification for which protection is sought.
