On 17 November 2022, the owner HARPER & NEYER SL (hereinafter “Harper”) filed European trademark application No. 18797402 for the following goods in class 25:Clothing; Footwear; Headgear; Parts of clothing, footwear and headgear.

Scalpers Fashion, S.L. (hereinafter “Scalpers”) filed an opposition against all the goods in the above-mentioned application on the basis of its previous European trademarks Nos. 9116245 and 15249345 , both in class 25.

The opposition was based both on the existence of a likelihood of confusion and on the reputation of the priority mark “SCALPERS” and its taking unfair advantage. Thus, the key elements for the decision of the Opposition Division are, firstly, the fact that the previous trademark no. 15249345 “SCALPERS” enjoys a certain degree of recognition among the relevant public for all goods in class 25 (clothing, footwear, headgear). Secondly, a similar overall impression caused by the coincidence in the figurative element of the skull, with a similar stylisation.

Finally, the EUIPO points out that, in the fashion sector, the same trademark is often configured in different ways depending on the type of product it designates, for example, by the inclusion or omission of some of its verbal or figurative elements. Thus, there is a risk that the requested trademark will be perceived by consumers as a new line of fashion goods of the previous trademark.

Therefore, it is considered that there is a likelihood of confusion and the requested trademark is refused, since the visual and conceptual coincidences between the signs can clearly be perceived by the consumer, with the differences existing between the graphical representations of the skulls of each of the conflicting signs being insufficient.

It is important to note that this ruling is not final, and that it has been appealed by the owner Harper. We do not yet know the arguments used by the appellant, but it is likely that Harper is arguing that two signs cannot be considered similar on the basis of the coincidence of a symbol that is widely known by consumers, such as the skull, and that it cannot be exclusively appropriated by any owner.

Furthermore, we find it surprising that the Office has not paid more attention to the fact that the trademark requested by Harper is not a mere representation of a common skull, but has additional elements which, on the one hand, distinguish it from Scalpers’ skull, and on the other hand, resemble its own previous trademarks, with the characteristic inclusion of polo sticks. All the conflicting representations are shown below:

Another interesting issue in the Ruling is that the Opposition Division did not consider the word part of the opposing party “SCALPERS” to be relevant when assessing the similarity between the signs. Thus, it established that “the difference in the additional word element of the previous trademark, “SCALPERS”, cannot neutralise the impact produced by the coincidence in the similar stylised skull in both marks”.

We wonder what position the Office would have taken if, in this case, the requested trademark had included the terms “HARPER & NEYER” as a word element. That addition is not a trivial matter since, if that had been the case, there would be a completely different additional word element and the Office would have had to assess whether that element would make it possible to neutralise the coincidence of the graphical element of the skull.

This case reminds us of the numerous factors that influence the analysis of a trademark and its feasibility for registration, since, together with the choice of the respective graphical and word elements, the field of application and the goods and services that it will seek to identify on the market must also be taken into account, since this will determine whether the verbal variant or, on the contrary, the visual impression will be more important.

In short, we will be keeping an eye on the ruling in this case and on the arguments of each of the parties involved, in order to keep up to date with the criteria followed by the Office in these cases. We cannot overlook the importance of logos and branding for fashion trademarks, as well as the losses that can be incurred by a company when its trademark either becomes vulgarised and is no longer identified by consumers as a distinctive element, or when it is refused after years of use in the market.

Nerea Álvarez Barroso
Consultant in the International Trademarks and Brand Intelligence Department at PONS IP