Case T‑559/13

(publication by extracts)

Giovanni Cosmetics, Inc.

v

Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)

(Community trade mark — Opposition proceedings — Application for Community figurative mark GIOVANNI GALLI — Earlier Community word mark GIOVANNI — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Distinctive character of a first name and a surname)

Summary — Judgment of the General Court (Fifth Chamber), 3 June 2015

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Distinctive character of a first name and a surname — Figurative mark GIOVANNI GALLI and word mark GIOVANNI

(Council Regulation No 207/2009, Art. 8(1)(b))

In the absence of any specific evidence relating to the perception of the public throughout the European Union, it is not appropriate to extend the case-law pursuant to which, in certain Member States, surnames have, as a general rule, a more distinctive character than first names so that it applies to the whole of the European Union.

In view of the fact that, for at least a part of the European Union, it is not established that surnames have, in principle, a more distinctive character than first names, and in view of the fact that the majority of the public located outside Italy will not perceive either of the names Giovanni and Galli as common or rare, there are no grounds for ascribing greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’ from the point of view of the whole of the relevant public. The Board of Appeal was therefore wrong to ascribe greater distinctiveness to the element ‘galli’ than to the element ‘giovanni’ for the whole of the relevant public.

It is true that a part of the relevant public — namely, the part of that public which knows that the element ‘giovanni’ is a common Italian first name and that the element ‘galli’ of that mark is a rare Italian surname or which generally ascribes greater distinctiveness to surnames than to first names — will ascribe greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’. However, for the other part of the relevant public, the inherent distinctiveness of the elements ‘giovanni’ and ‘galli’ is identical, and corresponds to an average distinctiveness.

(see paras 52-54)