The influencer Chiara Ferragni manages to register her european trademark after a long drawn-out battle
Following the recent decision by the Court of Justice of the European Union (CJEU), the influencer Chiara Ferragni is now free to continue to extend her already substantial fashion empire.
After years of conflict with a Dutch company, the CJEU has just granted her the following European trademark for bags, purses and wallets in class 18 and for clothing, sportswear, bathing suits and lingerie, among other items, in class 25:
The conflict started in 2015. After filing the application at the EUIPO for the figurative mark CHIARA FERRAGNI, a Dutch company, owner of an earlier word mark—registered in Benelux—consisting of the term “CHIARA” and registered for the exact same goods in class 25, opposed it.
Following this opposition the EUIPO’s Board of Appeal refused the figurative trademark “CHIARA FERRAGNI” for some goods in class 18 and all goods in class 25, due to a likelihood of confusion between them.
Serendipity Srl, owner of the trademark “CHIARA FERRAGNI”, appealed the EUIPO’s decision at the CJEU. In its recent decision the General Court has annulled the EUIPO’s decision, concluding that the conflicting marks are able to coexist without causing a likelihood of confusion among the public.
The EUIPO considered that the most distinctive and important part of the figurative trademark “CHIARA FERRAGNI” was the word “CHIARA”, common to both marks. Conversely, the CJEU held that the figurative elements of the mark “CHIARA FERRAGNI” were just as important as the word element “CHIARA”, given their highly stylized nature, color, position and size within the mark overall.
The CJEU also compared the trademarks from a visual, phonetic and conceptual standpoint, ruling as follows.
As regards visual similarity, the Court noted that, although the earlier word mark ‘CHIARA’ was entirely reproduced in the word elements of the mark applied for, the figurative element of the latter is in a dominant position in the mark overall and is very distinctive since it consists of a sky blue eye with long black lashes, giving it a significant impact in the overall visual impression making the two signs only slightly visually similar.
Regarding the phonetic similarity the CJEU held that the word “FERRAGNI”, despite being at the end of the mark is, given its length, phonetically more important than the word in common “CHIARA”. As a result, the conflicting signs have an ‘average’ or even ‘slight’ phonetic similarity.
Finally, from a conceptual standpoint the Court held that the signs at issue were different because whereas “CHIARA FERRAGNI” refers to a specific person, i.e. the influencer, the word mark is a women’s name “CHIARA” that does not identify anyone in particular.
Lastly, the CJEU concluded that despite the fact that the goods covered by both marks were practically identical, the visual differences between them provide sufficient grounds to rule out any likelihood of confusion on the part of the public, especially given that the goods are sold in self-service stores, where decisions to make purchases are mainly based on visual criteria. Based on the above the Court considers that the differences between the two marks mean that consumers will not think that the goods come from the same undertaking.
The Court therefore concluded that EUIPO erred in refusing registration of the trademark “CHIARA FERRAGNI” due to a likelihood of confusion and considered it appropriate for registration.
This decision by the CJEU—which may still be appealed at the Court of Justice—is a huge breakthrough for the influencer CHIARA FERRAGNI who, after her successful shoe collection will be able to continue to extend her business in the fashion world.
Isabel Pérez-Cabrero Fernández, principal associate in the Intellectual Property Department