This article first appeared on WTR Daily, part of World Trademark Review, in (June/2019). For further information, please go to www.worldtrademarkreview.com

In Andrea Incontri Srl v European Union Intellectual Property Office (EUIPO) (Case T-197/16), the General Court has annulled the decision of the Fourth Board of Appeal of the EUIPO of 25 February 2016 in opposition proceedings between Higicol SA and Andrea Incontri Srl

Background
On 3 April 2013 Higicol led an opposition against the EU trademark application for ANDREA INCONTRI claiming protection for goods in Class 3, based on a likelihood of confusion with its earlier ANDREIA marks for goods in Class 3. The Opposition Division of the EUIPO upheld the opposition for nearly all the contested goods.

Applicant Andrea Incontri led an appeal. On 25 February 2016 the Fourth Board of Appeal of the EUIPO dismissed the appeal on the ground that the goods were identical and that:

the words of which the mark applied for was comprised, irrespective of whether or not they were perceived as a rst name and a surname, had no meaning in relation to the contested goods and
were co-dominant in the overall impression produced by the mark applied for 

The applicant headed to the General Court, claiming that the Board of Appeal had erred in conrming that there was a likelihood of confusion between the marks at issue.

General Court decision

In its decision, the General Court focused mainly on the comparison of the signs and on the relevance of each element of a trademark that is composed of a rst name and a surname.
The court rst recalled that, according to the relevant case law, account must be taken of whether the name and surname at issue are common or rare, since this factor will be relevant in the assessment of the distinctive character of each element of the mark.
In addition, the court held that the Board of Appeal had only envisaged two opposite hypotheses (ie, 1) the relevant public perceives the words ‘Andrea’ and ‘Incontri’ as a rst name and a surname; and 2) the relevant public does not perceive these elements as a rst name and a surname), without making a decision on which of these hypotheses was correct. The board had merely stated that, in both cases, the word elements at issue were co-dominant, on the ground that they had no meaning in relation to the goods concerned.
In particular, the court stated in Paragraph 47:

[The Board of Appeal] failed to have regard to whether the rst name ‘Andrea’ and the surname ‘Incontri’ were common or, on the contrary, rare, even though the applicant had claimed in the
administrative proceedings that the ‘andrea’ element was a common rst name and the ‘incontri’ element was rather a rare surname.

Had the Board of Appeal conducted such assessment, it might have correctly considered the distinctive and dominant character of the word elements ‘Andrea’ and ‘Incontri’ in the hypothesis under which they are perceived as a name and surname by the relevant consumers, concluding that the word ‘Andrea’ was of lesser distinctiveness than ‘Incontri’.

As a consequence, as stated in Paragraph 58:

[A] nding that the ‘andrea’ element was less distinctive than the ‘incontri’ element could have had an effect on the visual, phonetic and conceptual comparisons of the marks at issue and,
consequently, altered the global assessment of likelihood of confusion.

The General Court thus sent the case back to the Board of Appeal, recommending that the latter make a decision relating to the hypothesis under which the word elements would be perceived as a first name and surname by the relevant consumers, taking into account all the relevant factors highlighted in the decision.

June 2019