NET-A-PORTER vs. Chêf-à-porter: the OHIM considers the second trademark to be non-registrable due to lack of novelty

In the decision of 7th July in case R 1673/2014-4, the Fourth Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) granted the appeal proposed by Net-a-Porter Group Ltd., a leading company in high-fashion online retailing, against the Spanish Duka Márquez S.L., which sought to register the word sign “Chêf-à-porter” as a Community trademark (CTM). The OHIM established that this trademark is invalid due to lack of novelty, in consideration of Net-a-Porter’s earlier trademarks.

Here are the facts. In September 2009 the Spanish company sought the CTM registration of the “Chêf-à-porter” sign for the following goods and services: cooking utensils and tools (Class 21); clothing and footwear relating solely to chef and kitchen staff equipment (class 25); advertising, business management and the presentation of goods on any communication media, for retail purposes (class 35). Three months later, Net-a-Porter opposed the application enforcing some of its similar earlier trademarks essentially registered for the same goods and services. These trademarks would have prevented the registration of the requested trademark pursuant to Art. 8(1)(b) of the EU Regulation No. 207/2009; in particular, inter alia, the opponent enforced the English word trademark “NET-A-PORTER”, registered in the 2007 and the eponymous community trademark, registered in July 2009. The opponent, in addition, stated that these trademarks had a reputation amongst the relevant public; this fact, according to Article 8(5) of the same Regulation, confers on the trademark extra-protection and prevents the later CTM registration of similar signs even for different goods and services.

The OHIM granted the opposition only in part, on the sole basis of the assessed reputation of the earlier trademarks enforced by the opponent: therefore, it expressed the view that this reputation prevented the later CTM registration for goods in Class 25 and for certain services in Class 35, but not for those in Class 21 and for advertising and business management services in Class 35. The ground for refusal under Art. 8(1)(b), instead, was considered unfounded as there would not have been any likelihood of confusion between the trademarks at issue. This is because although the goods and services covered by the later trademark are in part identical and in part similar, the two signs would in any case be visually, aurally and conceptually different (despite the common final element) due to the conceptual differences between the words “Chef” and “NET”, which would help the average consumer to distinguish between the signs.

Net-a-Porter appealed against this decision alone, stating in particular that there would be a likelihood of confusion, because, in addition to the identity/similarity between the goods and services protected, the signs would also be similar, given that their common element “a-porter” constitutes the most distinctive element of the earlier trademarks.

The Board of Appeal stated that the appeal was well-founded. As a preliminary remark, it pointed out that the Opposition Division had unnecessarily started its examination with the assessment of the reputation of the earlier trademarks, rather than firstly assessing the similarity between the signs and the relevant goods and services, and the resulting possible likelihood of confusion between them.

In this respect – as opposed to the Opposition Division’s conclusions – the Board of Appeal first stated that the goods and services covered by the abovementioned trademarks are identical or, however, highly similar, also considering the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other. Then, in assessing the degree of similarity between the signs, on the basis of their overall impression, it established that: (i) visually, the signs have the same structure and only differ in their irrelevant beginnings “Ch_f” and “N_T”; (ii) aurally, the pronunciation of the signs coincide in sound and number of syllables; (iii) conceptually, both the signs have no clear meaning except the reference to the French expression “prêt-à-porter”, used in the fashion industry. The Board of Appeal concluded that it follows that the two signs are definitely similar, even if consumers in general pay more attention to the beginning of a trademark than the end.

Having assessed the similarity existing between the signs and the relevant goods and services, it was then found that there is a likelihood of confusion between the trademarks, as the relevant public might believe that the goods or services covered by the trademarks at issue come from the same undertaking or from economically-linked undertakings.

In light of all the above, pursuant to art. 8(1)(b) and without any need to assess the alleged reputation of the earlier trademarks, the OHIM therefore declared the CTM Chêf-à-porter invalid due to lack of novelty in relation to all the goods and services for which its registration was sought.