Compagnie des montres Longines, Francillon SA v. Office for Harmonization in the Internal Market (OHIM) (Case T-76/13, February 25, 2015)
In Compagnie des montres Longines, Francillon SA v Office for Harmonization in the Internal Market, the General Court recently upheld a decision by the Fifth Board of Appeal (the “Board”) and dismissed an opposition filed by Swiss watchmaker Compagnie des montres Longines (“Longines”), notwithstanding the reputation of the earlier marks and the identical goods of interest.
In 2010, Staccata Srl (“Staccata”) filed a CTM application for the figurative mark for a range of goods in Classes 9 and 14, including, inter alia, “horological and chronometric instruments.” Longines subsequently opposed the application on December 20, 2010 for all applied-for goods based on its earlier figurative and composite registrations featuring a “winged hourglass” design and in Classes 9 and 14.
Longines based its opposition on Article 8(1)(b) of the Community Trade Mark Regulation, arguing that the marks at issue and goods coverage were highly similar and therefore likely to cause confusion among consumers. Longines also relied on Article 8(5), arguing that consumers would be likely to confuse the respective marks due to the long-standing reputation of their earlier trademarks.
In November 2011, the Opposition Division of OHIM rejected Longines’ opposition on both the asserted grounds. Longines appealed and, in November 2012, the Board dismissed the appeal and upheld the decision in its entirety. On further appeal, the General Court upheld the Board’s dismissal of the opposition on the ground that there was no likelihood of confusion or association between the respective marks, and that while Longines established the reputation of their earlier composite mark, that was insufficient to support a claim under Article 8(5) since the evidence did not demonstrate reputation of the “winged hourglass” design on its own.
In comparing the respective marks, the General Court held that the graphic element (namely, the “extended wings” featured in both parties’ marks) cannot be considered the dominant feature of either mark. Rather, the court emphasized that in Staccato’s mark, the letters “Q” and “M” have significant impact as they are featured in the middle of the design, and that “QUARTODIMIGLIO” is at the top of the mark and as wide as the design itself. As for Longines’ marks, the court pointed out that “LONGINES” appears prominently in the earlier composite marks, making it easily legible, recognizable, and memorable to consumers. Additionally, the General Court agreed with the Board’s approach of meticulously comparing the representation of the wings in the respective marks, finding that the stylistic and conceptual differences reinforced the visual differences. In concluding that there was low similarity between the respective marks, the General Court observed that “where a mark is composed of word elements and figurative elements [as with the mark at issue here], the former must, as a rule, be considered to be more distinctive than the latter, as the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark.” Here, inclusion of “QUARTODIMIGLIO” was found to distinguish Staccato’s mark from Longines’ earlier figurative and composite marks.
The General Court then analyzed the potential for likelihood of confusion between the respective marks, and concluded that in view of the overall visual and phonetic differences, the Board was correct in finding no likelihood of confusion, despite the identical goods of interest and arguable similarity (albeit at a “low level”). The General Court concluded that the significant visual and stylistic differences outweighed the few visual similarities. With respect to Longines’ “winged hourglass” design mark, the General Court found no likelihood of confusion, noting the phonetic differences (namely, that the design mark would not be pronounced by consumers whereas Staccato’s mark would be pronounced “QUARTODIMIGLIO” or “QM”), as well as the low conceptual similarity.
As to Longines’ arguments under Article 8(5), the General Court determined that Longines’ evidence successfully proved the reputation of the earlier composite marks (i.e., those featuring “LONGINES” and the “winged hourglass” design) for goods such as watches, in view of their “continuous quantitatively and qualitatively significant use over a period of time.” Regarding the “winged hourglass” design, however, the court found that Longines failed to demonstrate reputation, as the evidence submitted generally did not show use of the figurative element on its own, and even where it did, the design did not occupy a visually important position on the goods at issue. The court pointed out that consumers do not focus on the “winged hourglass” component of the composite mark; rather, it is the word element “LONGINES” that is dominant in the overall impression of these marks and attracts the attention of consumers. The General Court therefore upheld the Board’s finding that registration of the applied-for mark would not be detrimental to or take unfair advantage of the reputation or distinctive character of Longines’ earlier marks.
The General Court noted, in passing, that the Board may have reached a different conclusion with respect to the “winged hourglass” design on its own if the device had been shown to be consistently represented in a different manner, in a combination of a large figurative and a small verbal element, or if Longines had proven that consumers were indeed accustomed to focusing on the “winged hourglass” device alone, rather than on the “LONGINES” component. This case suggests that in order to demonstrate reputation in a design/logo (apart from any verbal matter and/or house marks that may accompany it) under Article 8(5), the trademark owner would need to demonstrate use of such design/logo on its own or in a combination that strongly emphasizes that element.