EU rules on long running fashion trade mark case
15th February, 2013
The EU Court of Justice has delivered its verdict in a long-running trade mark case.
The decision in the case involving jeans maker 7 For All Mankind and an Italian backpack manufacturer has important ramifications for trade marks across the European Union.
What was the case about?
Fashion jeans company Seven For All Mankind LLC (“7 For All Mankind”) first applied in 2005 for the EU trademark SEVEN FOR ALL MANKIND to cover products such as jewellery, belts, suitcases and rucksacks.
Italian rucksack maker Seven SpA challenged the application, arguing that it already had trademarks for ‘Seven’ for its products in the EU and it would confuse consumers to have two backpacks on the market both with the name ‘Seven’ prominent in their branding.
What did the courts say?
Initially, the EU’s trade mark authority rejected Seven SpA’s appeal, saying there was no likelihood of confusion with the Italian company’s trademarks for the word ‘Seven’.
However, Seven SpA’s challenged the decision and in 2011, the EU General Court ruled that “there is a certain overall similarity between the marks at issue” because the presence of the word Seven in the names “is not insignificant.”
7 For All Mankind appealed against this decision, taking the case to the EU Court of Justice, the highest court in the EU.
The ECJ upheld the General Court’s ruling, a decision which cannot be appealed by 7 For All Mankind, leaving the Italian rucksack maker the victor in the dispute and 7 For All Mankind with an order to pay its legal costs and those of Seven SpA.
Why is this case important?
Whilst followers of this case may have considered that the marks (Seven For All Mankind and SEVEN) were distinguished from each other by (amongst other things) the wording “for all mankind” and therefore, that 7 For All Mankind should have successfully registered their trade mark, the court decided that the additional wording was not sufficient to distinguish the goods of 7 For All Mankind from those of Seven SpA.
Presumably as the court considered that the additional wording merely described the consumers to which the goods were intended to be marketed.
What does this mean for me?
Whilst the decision reached in this case may be considered by some to be out of the ordinary, it does demonstrate that care must be taken when choosing a new brand name or when deciding to develop a brand into a new geographical, product or service area.
Ensuring that you have a brand which distinguishes your goods and services (or those of your clients) from pre-existing brands (and therefore, trade marks) will avoid problems going forward.
For further details on brand development and protection, trade marks, their importance and how to manage them, please get in touch.
Please note that this briefing is designed to be informative, not advisory and represents our understanding of English law and practice as at the date indicated. We would always recommend that you should seek specific guidance on any particular legal issue.
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