Aesthetically complementary

GvEA, 16 december 2009, T-483/08, Giordano Enterprises Ltd tegen OHIM / José Dias Magalhães & Filhos lda

Gemeenschapsmerk. Oppositieprocedure tegen aanvraag Gemeenschapswoordmerk GIORDANO (kleding) tegen ouder national woordmerk GIORDANO (schoeisel). Oppositie gedeeltelijk toegewezen. Verwarringsgevaar.

29. In the present case, the Board of Appeal relied not only on the fact that the goods at issue were aesthetically complementary but also on the consideration, which the Court has also found to be valid in the present judgment, that both the goods in Class 18 listed in the last sentence of paragraph 9 above [‘goods made of leather and imitations of leather,  particularly bags, beach bags, handbags, waist bags etc. – IEF]. and ‘footwear’ are, at least sometimes, sold in the same specialised retail outlets as well as in major retail establishments. It is thus appropriate to hold, on the basis of those two mutually reinforcing considerations, that the Board of Appeal did not err in holding that those two categories of goods are similar within the meaning of Article 8(1)(b) of Regulation No 40/94, at least to a certain degree.

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33. In making an overall assessment of the likelihood of confusion in the present case, the Court considers that, although the goods covered by the two trade marks are similar only to a certain degree, that relatively limited level of similarity is offset by the fact that the two signs at issue are themselves identical. Thus, the Board of Appeal was right to decide that a likelihood of confusion exists between the earlier Portuguese mark, registered for ‘footwear’ in Class 25, and the Community trade mark which the applicant seeks to register both in respect of ‘clothing’ and ‘headgear’ in Class 25 and also in respect of the goods in Class 18 listed in the last sentence of paragraph 9 above.

Lees het arrest hier.