The European General Court - A low degree of distinctiveness does not grant you a monopoly in the fashion sector

In 2017, the fashion label, Pierre Balmain, filed a trademark application in Europe for the contested lion mark below:

The mark was filed for protection in classes 14 (jewellery) and 25 (clothing, footwear, headwear). A Polish company, Story Time Sp. Z.o.o. filed an opposition proceeding to prevent the registration citing its earlier lion head trademark registered in classes 14 and 25.

The Opposition Division of the EUIPO upheld the opposition. Undeterred, Pierre Balmain appealed. The Fourth Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion. Of the Appeal Board’s decision, the Judges of the Third Chamber of the General Court stated at EU:T:2023:851 –

…the Board of Appeal took into account that the relevant public’s level of attention varied from average to high, that the goods at issue were identical or similar to various degrees, from low to high, that the marks at issue were visually similar to an average degree and conceptually identical, since they both conveyed the concept of a lion’s head and the earlier mark had a normal degree of inherent distinctiveness.

Despite two losses with the Opposition Division and the Board of Appeal, Pierre Balmain took the fight on a further appeal to the European General Court. Sometimes if you believe in the merits of your position, you have to fight all the way. Pierre Balmain were rewarded for its persistence.

The General Court found that there was no likelihood of confusion, in that it is banal and common practice to use the representation of a lion’s head in the fashion sector. At paras. 47 to 49, The General Court found:

…if it is common for consumers of goods in a particular sector to be faced regularly with certain types of images or figurative elements in the context of the commercial presentation or the decoration of those goods and those consumers are, consequently, accustomed to seeing them in that decorative function, those images or elements lose their ability to attract their attention as elements which are capable of identifying the commercial origin of those goods and will generally have a weak distinctive character with regard to those goods…

…it is a fact which is likely to be known by anyone or which may be learnt from generally accessible sources that, in the fashion sector, it is a banal or common practice to use representations of lions or lion’s heads or more generally, of wild, strong and exotic animals in the commercial presentation or the decoration of goods…

…the representation of a lion’s head is a banal and commonplace decorative motif for4 a clothing accessory, such as ‘buttons’, ‘cuff links’ or ‘jewellery with lions’ heads on it’ in the fashion sector.

The General Court found there was a low-degree of distinctiveness in both marks and where the owner of the earlier mark could not establish that its mark had attained enhanced distinctiveness through intensive or extensive use, the earlier mark:

…cannot claim excessive protection for that mark, which would be liable, in practice, to give him or her quasi-monopoly over the commonly used concept on which it is based… (paragraph 73)

…the earlier mark serves only to a limited extent to identify the goods in respect of which it is registered as coming from a particular undertaking and to distinguish those goods from those of the other undertakings… (paragraph 74)

The General Court found that the Board of Appeal had given undue importance to the conceptual identity of the marks rather than the weak distinctive character of the concept which is common to the marks and the weak distinctive character of the earlier mark.

As such, the General Court annulled the earlier decision of the Board of Appeal and ordered costs against the EUIPO.