Monday, 2 March 2009

Beverly Hills and the German shopping question

Is Beverly Hills known as a place to go shopping? This question recently troubled the Court of First Instance of the European Communities in Luxembourg in a decision, dated last December, that was published only last week.

Way back in January 1997 Giorgio Beverly Hills Inc (GBH) applied to register as a Community trade mark the words GIORGIO BEVERLY HILLS for, among other things, "clothing, footwear, headgear". In July 1998 WHG Westdeutsche Handelsgesellschaft mbH opposed this application, based on its existing registration for the word GIORGIO in Germany for "clothing (with the exception of hosiery)". The Opposition Division upheld the opposition since the similarity of the marks and goods was likely to confuse consumers.

GBH then appealed unsuccessfully to the Board of Appeal. Said the Board, since ‘Giorgio’ was the dominant element of each mark, they both looked and sounded similar and conveyed similar conceptual content. In particular, since designers and manufacturers of clothing and other accessories often opened stores in various locations, the words ‘Beverly Hills’ would be viewed by most consumers as an indication of the nature of the goods themselves, being
"a reference to the famous shopping quarter of Los Angeles, in the United States, one of the preferred places of famous designers and manufacturers",
rather than as helping to designate clothing as originating from GBH.

GBH next tried its luck with the Court of First Instance -- and this time it won. The Court held that since the earlier mark was registered in Germany, the key question was whether a reasonable well informed, observant and circumspect German shopping for clothing, footwear and headgear would be confused between the two Giorgios.

A German shopper confused?, certainly not! The Court decided that the words "Beverly Hills" were not, as the Board had suggested, of only weak distinctive force. Had not the Court already said so as long ago as 2003? Evidence submitted by the WHG that Beverly Hills was known as a shopping district was rejected, not because it was irrelevant but because it had been submitted for the first time at the appeal, depriving the Board of Appeal of the opportunity to review it.

The lesson from all of this? Fashionista suggests that brands take care when choosing their trading name and conduct full trade mark clearance searches before they commence use to avoid any confusion (actual or perceived) occurring. And if you are unfortunate enough to find yourself embroiled in a dispute, seek a early resolution. If your opponent as persistent as WHG, it could be a long haul - in this case over 10 years' worth of legal fees!