• IN THE UK OFFICE

    LE SPOSE DI GIO How “Anglophone” is “Anglophone”?

    Is it permissible and, if so, when, for English equivalents to determine distinctiveness, descriptiveness or deceptiveness of foreign words applied for as trade marks in the U.K.?

    This issue was examined recently by the Appointed Person in a case involving the trade mark LE SPOSE DI GIO.

     

    Background

    Di Gio SrL (“Gio”) had applied to register the mark LE SPOSE DI GIO in Class 25. GA Modefine SA (“GA”) opposed on the basis of its earlier CTM registrations for ACQUA DI GIO’ and GIO’ in Classes 3 and 25. The Hearing Officer upheld the opposition, and Gio appealed to the Appointed Person.

     

    Appeal

    The Appointed Person considered the manner in which CTM applications are examined on absolute grounds, and concluded that such an approach could not be used to determine a relative grounds objection in the U.K. Rather, he should consider the impact of a word mark on speakers of English, in order to determine whether the mark was acceptable. He approved the approach of the CFI in the Oriental Kitchen case, (KIAP MOU/MOU), ie, that the fact that the words had a meaning in Laotian and Thai could not be used to narrow the scope of the objection on relative grounds. In the present case, therefore, an objection to registration could not be resolved on the “skewed” view that any of the marks in question would be used in the U.K. in a context requiring familiarity with the Italian language.

    The Appointed Person considered the issue further and looked at whether it would be permissible for an examination on absolute grounds to consider the English meaning of foreign words. He considered that, unless there was good reason to show that the “predominantly anglophone public” in the UK would understand the meaning of the words in question, it was impermissible for the English equivalents of foreign words to be used for the purposes of testing the issues relating to the distinctiveness, descriptiveness or deceptiveness of those words. This meant that it was not possible to refuse to register word marks on the basis that they were descriptive in languages of other member states. This did not, however, preclude the possibility of refusal on the basis of section 3(1)(d), that the word in question had become common in the trade.

    As regards the current case, the Appointed Person felt that the mark ACQUA DI GIO’ would be seen as an “Italian” phrase. The word “ACQUA” is likely to be understood as being connected with “AQUA”, and the word “di” to mean “of”. This, the Appointed Person felt, would mean that the element GIO’ would be seen as most distinctive.

    Similarly, the Appointed Person found that the formula used in the mark LE SPOSE DI GIO (ie, the same sentence structure as was used in ACQUA DI GIO’) is likely to focus the average consumer’s attention on the word GIO, making this the dominant element in the mark. He therefore felt that there was a likelihood of confusion between the marks.

     

    Comment

    The reasoning of the Appointed Person in this case is somewhat odd. He starts, quite reasonably, by considering the “anglophone” nature of most people within the UK, and concluding that, with few exceptions, it would not be acceptable to assume that an English person had knowledge of a foreign language.

    However, having made this fundamental (and probably true) statement, he then went on to make the following statements:

    • The UK consumer would recognise the two phrases in question as “Italian”;

    • The UK consumer would understand the word “Gio” to be a name;

    • The UK consumer would understand the word “di”;

    • The UK consumer would understand that the word “acqua” is related to water;

    • The UK consumer would therefore believe that “Gio” represented the dominant element of both marks and find them confusingly similar.


    The second part of the reasoning appears to contradict the first. If the UK consumer is as anglophone as the Appointed Person believes, then it is the writer’s view that, rather than part-understanding both marks, the average UK consumer is more likely to see them both as “foreign”, having no discernible meaning, and would be more likely to remember the first element of each mark, being “spose” or “acqua”, and be able to differentiate between them.