Legal | Tax | Compliance
Legal | Tax | Compliance
Armani loses trademark dispute – eagle logo not recognised. The Federal Administrative Court denies the likelihood of confusion between the famous ‘Armani’ eagle logo and ‘PARUI’.
In its decision of November 8, 2024 (B-636/2023), the Swiss Federal Administrative Court upheld the decision of the Swiss Federal Institute of Intellectual Property (IPI), concluding that there is no risk of confusion between the "PARUI (fig.)" trademark of Guangzhou Qiluoshi Watches Co., Ltd. (the "Respondent") and the older "Armani" eagle trademarks of Giorgio Armani S.P.A. (the "Appellant").
Respondent applied for the registration of the word and figurative mark "PARUI (fig.)" for, inter alia, jewelry and fashion items in classes 14, 18, and 25. Giorgio Armani S.P.A. opposed this application, relying on older Swiss trademarks which also cover goods in these categories. The older Armani trademarks feature stylized eagles. In its decision of December 20, 2022, the IPI rejected the opposition. The Appellant subsequently filed an appeal against the IGE’s decision with the Federal Administrative Court.
Trademarks that resemble an older mark and are intended for identical or similar goods or services are excluded from protection if they create a risk of confusion. The decisive factor in this assessment is the impression made on of the relevant consumer groups, with the overall impression in terms of phonetics, appearance, and meaning being particularly important. The greater the similarity between the goods and services for which the trademarks are registered or are to be registered, the higher the requirements of distinctiveness. The perception of the relevant consumer groups is key in this assessment.
The similarity of marks in combined word and figurative trademarks is assessed based on the basis of the overall impression they leave on the relevant audience in terms of phonetics, visual appearance, and meaning. Distinctive elements dominate the overall impression, while less noticeable components play a subordinate role. Whether the word or figurative component is more significant in the assessment of combined trademarks must be determined on a case-by-case basis, depending on the distinctiveness of the respective elements.
In assessing the likelihood of confusion in this case, the Federal Administrative Court assumed an average to slightly increased level of consumer attention. Regarding the distinctiveness of the conflicting Armani trademarks, the court found that while the stylized eagle of the Armani trademarks had a high degree of distinctiveness, this is primarily due to its association with the word elements such as "Armani," "Emporio Armani," or "GA." Without this association, the trademark would not have reached the level of recognition necessary to confer on it an overall high degree of distinctiveness.
The Federal Administrative Court upheld the IPI’s decision that the goods in question were identical and found that there was only a slight visual similarity between the trademarks. The similarity was mainly due to the horizontal lines, which could be reminiscent of wings. However, a comparison of the graphic elements showed that the depiction of the wings differed in a number of aspects – particularly in the number of strokes, stroke thickness, and spacing – resulting in a striking difference between the marks. The Federal Administrative Court also found that the word element "PARUI" dominates the overall impression of the disputed mark and is distinctive for the claimed goods, further contributing to differentiation. Additionally, the Chinese characters in the disputed mark enhanced its visual distinction from the opposing trademarks.
The Federal Administrative Court compared this case with a previous ruling in which Appellant was involved (4A_651/2018). In that case, the court also ruled out a likelihood of confusion between the "Armani eagle" and the "Glycine" mark, even when examining only the figurative elements. Although there was a similarity in the design of the wings, the graphical depiction differed significantly in several key aspects.
The Federal Administrative Court’s decision confirms the principle that the overall impression of the trademarks is always decisive. The court concluded that there was no risk of confusion, as the marks, despite similarities in the wing design, clearly differ in their specific depiction and overall impression.
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