ChatGPT's defence not convincing: BOIP rejects ARTPENGUIN trade mark - EU trade mark dispute: Giorgio Armani’s eagle

ChatGPT's defence not convincing: BOIP rejects ARTPENGUIN trade mark

On 22 November 2024, the Benelux Office for Intellectual Property (BOIP) ruled in case no. 2019397, which involved the participation of an artificial intelligence (AI) system, ChatGPT (OpenAI), acting as a delegate for the defendant. 

In 2023, Mr Tom Grashof applied to the BOIP for the figurative mark No 1494547 "ARTPENGUIN", represented by a stylised image of a penguin in a triangular background and the word "ART" followed by "PENGUIN". The mark covered goods such as varnishes, pigments, dyes, printing inks, paper and paperboard, bookbinding materials and printed photographs, all in Classes 2 and 16 of the Nice Classification. However, UK-based Penguin Books Limited opposed the application on the basis of five earlier trade marks. These included EU word marks PENGUIN (Nos. 15239941 and 128769), EU figurative marks Nos. 14116305 and 128819, and international mark No. 982139. In particular, the figurative marks show a penguin in a classic design with a clear facial expression. The opposition was specifically directed against the goods in Class 16 covered by the contested sign. 

The BOIP carefully considered the opposition filed by Penguin Books against the application for "ARTPENGUIN". Mr Tom Grashof, the applicant, relied on arguments generated by ChatGPT to support his position in the BOIP proceedings, which did not go quite as well as he probably hoped. 

First, the BOIP found that the goods covered by both marks fell within the same class and shared essential characteristics, creating a high likelihood of confusion for the public. Curiously, the defence did not explicitly address this key point. 

Regarding conceptual similarity, the BOIP stated that there was a clear link between the marks. Both included the term "PENGUIN" and graphically depicted a penguin, which reinforced the perception of a connection in the consumer's mind. Although ChatGPT argued that the modern design of "ARTPENGUIN" differed from the classic style of Penguin Books' marks, the BOIP was not convinced and concluded that these stylistic differences did not remove the conceptual similarity resulting from the common representation of the same animal as the central element. 

As for phonetic similarity, the BOIP found that despite the inclusion of the word "ART" in "ARTPENGUIN", the dominant component remained "PENGUIN". This assessment, together with the lack of solid arguments put forward by the defence, led to the conclusion that the marks were phonetically similar. In addition, the BOIP humorously pointed out a curious error in the arguments submitted by ChatGPT, which referred to a mark not involved in the case, in particular the word mark "Penguin Books". 

Lastly, as regards visual similarity, the BOIP noted that in the case of figurative marks with word elements, the word elements generally attract more attention from the relevant public. Although the defence highlighted the contrast between the modern design of "ARTPENGUIN" and the classic style of the Penguin Books marks, the BOIP concluded that these differences were not sufficient to counteract the medium degree of visual similarity.  As a result, Penguin Books' opposition was upheld and the contested mark refused for goods in Class 16. 

This case, in most regards unremarkable, however serves as a good reminder that while impressive, generative AI tools such as ChatGPT are not yet ready to prepare full and convincing arguments for legal disputes.

EU trade mark dispute: Giorgio Armani’s eagle

On 27 November, the General Court ruled in case T-509/23 on a dispute regarding the EU trade mark No. 15743891, owned by the Italian company Giorgio Armani.

In 2020, the Chinese company Shenzhen City Chongzheng Technology Co. Ltd. applied to the European Union Intellectual Property Office (EUIPO) to register the EU trade mark No. 018365053, a purely figurative sign characterised by thin horizontal lines, well spaced, forming a figure suggesting the capital letters 'V' or 'Y'. The mark covered goods in Class 9 of the Nice Classification, including headphones, USB chargers and portable smartphones. However, Giorgio Armani opposed the registration on the basis of its earlier trade mark No. 15743891, a purely figurative mark representing a stylised eagle with its wings outstretched and its head turned to the right. That mark is characterised by relatively thick horizontal bands and a diagonal lateral cut. It covers goods in Classes 9 and 25, such as sunglasses, mobile phone cases, mobile phones and smartwatches.

Both the Opposition Division and the Board of Appeal rejected the opposition. Although the applicant argued that there was a similarity between the goods and marks at issue, the Board of Appeal considered that the techniques of the conflicting marks were different, regardless of the level of attention of the public. It also rejected the arguments regarding the identity or similarity of the products due to the enhanced distinctiveness of the earlier mark and concluded that Articles 8(1)(b) and 8(5) EUTMR were not applicable in this case.

The Italian company then appealed to the General Court of the European Union, which had to decide whether there was a likelihood of confusion between the marks at issue.

First, the Court noted that the EUIPO Board of Appeal made an error by failing to carry out a global assessment of the likelihood of confusion. According to the case-law, two marks are considered to be similar if there is at least a partial correspondence between them from a visual, phonetic or conceptual point of view. In this case, the Court found that the conflicting marks had sufficient visual similarities to be considered similar. Although some minor differences in the visual details were alleged, the Court considered that these were not sufficient to negate the overall similarity between the marks.

In addition, the Court emphasised that the perception of the average consumer is the key factor in assessing the likelihood of confusion. It clarified that consumers do not typically analyse each detail of the marks separately, but perceive them as a whole. Therefore, the overall impression that the marks create in the consumer's mind is decisive in determining whether there is a likelihood of confusion. In this case, because of the visual and conceptual similarities between the marks, the Court considered that consumers, even with a reasonable degree of attention and knowledge, could easily associate the marks as coming from the same company or as being related, which would create a likelihood of confusion. Therefore, the Court decided to annul the decision of the EUIPO Board of Appeal.