FAKE DUCK vs. SAVE THE DUCK

FAKE DUCK vs. SAVE THE DUCK: Likelihood of confusion of figurative marks

The dispute arose as a result of the application for registration of the term FAKE DUCK as a Union figurative mark by Itinerant Show Room Srl (Italy) – although the earlier Union figurative mark SAVE THE DUCK of Save the Duck SpA (Italy) had existed for a longer period and identical or very similar goods and services were claimed by both marks ( in Nice classes 18 ‘suitcases’ and 25 ‘clothing’). SAVE THE DUCK is a well-known trademark, especially in the fashion and clothing sector. Accordingly, Save the Duck SpA filed an action against the trademark application FAKE DUCK and claimed likelihood of confusion. The Board of Appeal upheld the application and confirmed the likelihood of confusion. The applicant for the FAKE DUCK trademark refused to accept this and brought the case before the European Court (Court of the European Union: CJEU), which has now ruled on this trademark dispute. A proven similarity between two marks in dispute must always be considered in the overall context. The similarity of the goods in question and similar sales channels must also be taken into account in order to establish a likelihood of confusion, as must any highly distinctive character of the earlier mark, that is to say, a common knowledge of the earlier mark. However, the applicant submits that the Board of Appeal failed to take account of the conditions of purchase of the goods in question. That plea was rejected by the CJEU. The Court found that customers generally choose clothing themselves and, above all, visually and before purchasing it. The visual aspect is therefore of greater importance in the global assessment of the likelihood of confusion. Moreover, since the more distinctive the mark, the greater will be the likelihood of confusion, marks with a highly distinctive character enjoy broader protection than marks with a less distinctive character, the Court emphasised a well-known principle.