We all know: In administrative trademark proceedings, be it oppositions or cancellations, the marks in dispute need to be compared as registered. But does this indeed mean that rotation can be simply disregarded? The General Court recently said so. And dismissed an action brought by a fashion company against the registration of a third party mark on the ground that the figurative marks at issue are not similar. The General Court argued that the marks must be compared as applied for and as registered, without altering their orientation - i.e. without rotating the sign by 90 degrees, as the claimant suggested in its submissions. So what the General Court basically relied on is the notion that any hypothetical use, which may differ from the registration, is irrelevant when assessing similarity between marks under Art. 8 (5) and/or Art. 8 (1) (b) EUTMR. It held that the signs must be compared in the form in which they are protected, that is to say, as they were registered or as they appear in the application for registration. The actual or potential use of registered marks in another form is irrelevant when comparing the signs. But when we look at the (figurative) marks in dispute, is a rotated view indeed an impermissible hypothetical use to which the European Court of Justice referred in its judgment of 09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38? Or is such rotated view only a different perception of the mark as registered and as it appears in the application for registration - namely a perception taken from a side view? Are we assessing similarity of figurative marks in a stricter way than similarity of word marks vs. stylized marks? The EUIPO and the European courts consider a word mark to be visually similar to a stylized word mark or a figurative mark with word elements where there is no high variation in the stylisation of the word elements in the figurative mark and where the word element is easily recognisable and legible. Are we applying different standards? As you will note, I am struggling with the General Court's arguments, and wonder whether the European Court of Justice will give us more guidance on this fundamental issue if the decision is appealed.
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