Background
Artessence FZC (‘Artessence’) filed an opposition grounded on a likelihood of confusion against the EU trade mark application of Vinicio S.R.L. (‘Vincio’), an Italian luxury fashion retailer. The application was for the figurative mark VINICIO in Class 3 for goods including perfume and cosmetics, in Class 35 for retail services for the same Class 3 goods, and in Class 35 for retail services for virtual versions of the same Class 3 goods. Artessence relied on its earlier figurative mark INITIO PARFUMS PRIVES, which also covered perfume and cosmetics in Class 3 and candles in Class 4.
The decision
The Opposition Division of the EUIPO found that all of the goods in Class 3 of the application and the Class 35 retail services for the same Class 3 goods, were similar or identical to the goods protected by Artessences’ earlier mark. However, it concluded that the Class 35 retail services of the virtual versions of the Class 3 goods were dissimilar to the goods protected by Artessences’ earlier mark and were able to proceed to registration.
Comparison of virtual goods and their real-world counterparts
The Opposition Division acknowledged that virtual goods are generally understood to be non-physical items intended for use in virtual environments, to be used in the course of trade. They may, however, perform different functions as follows: (i) they may depict their real-world counterparts; (ii) emulate the functions of the real-world counterparts; or (iii) represent objects with no real-world equivalent.
Acknowledging the novel nature of virtual goods, it concluded that market practices and facts related to virtual goods are yet to be established and consequently, each parties’ submissions, providing specific and substantiated information about the goods and services, would have a decisive impact on the outcome of the case.
The EUIPO applied the accepted factors to be considered when examining similarity between goods and services, namely considering their nature, their intended purpose, their method of use, whether they are in competition or complementary and the distribution channels of the goods or services concerned.
It determined that while the Class 3 goods of the earlier mark are the real-world counterparts of the virtual goods in Class 35, this was not sufficient to conclude that there was similarity between the respective goods.
As no arguments or evidence was provided by Artessence to support the contention that the retail services for virtual goods in Class 35 were similar or identical to the Class 3 goods in the earlier mark, the Opposition Division having assessed that the nature, intended purpose and method of use differed between the virtual goods and their real-world counterparts, concluded that the relevant goods and services were dissimilar.
Commentary
While many brand owners are embracing use of virtual products and augmented and virtual realities to market their products and engage with customers, where recognised market practices are yet to be established, the EUIPO will not make any assumptions about the similarity of virtual goods and their real-world counterparts.
Consequently, evidence and arguments to support the contention that virtual goods are similar (or dissimilar) to their real-world counterparts, may well be a deciding factor. The types of evidence which are likely to decisive include evidence as to whether the virtual goods are distributed through the same channels or target the same relevant public as their real-world counterparts.
Given rapid technological advancements, there are likely to be increasing numbers of cases examining this area of trade mark law.
For more information or if you have any questions, please contact Emily Roberts, Alison Brennan or another member of the IP team.
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