Burburry is a most recognisable name. It's no less familiar checkered pattern is present on many clothes and accessories. Almost as often a galloping horseman rides across the checkered pattern. The horseman is registered as a trade mark in Russia under International Registration No 732707 in respect of goods in Class 25.
Another applicant, Hillsun International Industrial (China) filed in 2014 and obtained a registration No 575778 in respect of the same Class 25 of goods.
The patent office did not find similarity between these designations or, perhaps the examiner did not discover the earlier registered Burberry trade mark in the database. Anyway, some time later, Burberry noticed the existence of the Chinese trade mark and appealed against the registration on the basis of similarity. The owner of the appealed trade mark put forward arguments against the appeal. In particular, he noted that the outer appearance of the designations is different including that both horsemen ride in opposite directions (?). The cited trade mark shows an armed British knight while the appealed trade mark features a horseman clothed in a waving overcoat, unarmed, with a word element on the waving part of the overcoat representing the distinctive part of the company name of the trade mark owner. The heads and tails of horses are stylized differently. The cited trade mark may be associated with Britain, army, war while the appealed trade mark does not elicit such associations.
With all that, the board of the Chamber of Patent Disputes after examining the statements of the respondents concluded that the arguments of the appellant were convincing and explained its position in the way as follows:
The appealed trade mark, Registration No 575778 is a combined image which includes a stylised picture of a horseman with an overcoat on the waving part of which there is an inscription "HILLSUN", made in standard font in Latin characters. The cited trade mark according to IR 732707 is figurative designation representing a stylized picture of an armored horseman with a waving banner.
The board noted that when the images are perceived by the consumer his attention is first focused on exterior outline while small details are memorised to a lesser extent. Similarity of the compared trade marks is determined by general visual impression received by the consumer because the outlines of the horsemen figures coincide, the colour representation is the same, they have the same semantic meaning, i.e. stylized image of galloping horsemen. Besides, the techniques of stylisation are the same: both images are drafted using graphic silhouette outlines with a specific elaboration of details.
The presence of a word element "HILLSUN" in the appealed trade mark does not affect the conclusion on similarity because the inscription is made in small font and the attention of the consumer is not concentrated on it. The statement of the owner of the appealed trade mark regarding the cited trade mark, which allegedly features a British knight and elicits associations with Britain and military hostilities unlike the horseman in the appealed trade mark, does not hold water. This may be confirmed by the fact that perception of the image as a British knight is subjective because there are no distinctive features which would point to Britain.
The board also noted that both, the cited and the appealed trademarks may be associated with Middle Ages and Renaissance which enhances semantic and visual similarity of the compared designations.
As a result, registration of the appealed trade mark was cancelled. The Burberry knight continues his gallop unrestrained.
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Vladimir Biriulin |
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