frankie morello

Frankie Morello versus FRANKIE4: trademark fuss explained

In this blog we’ll try to answer 2 important things:

  1. What does a paralegal or intern do at Backstage Legal, and
  2. How does a good summary about a trademark case look like?

Paralegal [werkstudent] or intern [stagiair/e] at Backstage Legal

We rarely ask you to write a internal memo. If it’s only us that will use your memo once, your work is not very scalable. The entrepreneurial spirit in us tries to avoid such timespend. However, it’s a good practise to show and develop your writing skills.

We are lucky enough to have Laura on our side as an intern, as she wrote an internal memo that was so good, that we want to publish it on this website. This way you can learn about an interesting trademark case and you can see what a good and useful internal memo looks like.

“FRANKIE4” Case – Executive Summary

Country: Benelux

Case Name and Citation: BENELUX Office for Intellectual Property Opposition Decision No. 2015545 of 30 June 2023.

Date of Decision: June 30, 2023.

Trade Dress for: Footwear.

Plaintiff: Frankie Morello Trademark S.R.L.

Defendant: Frankie4 IP 1 Pty Ltd.

Concepts: Likelihood of Confusion, Trademark/Trade Dress Registration.

Nature of Case: This case involves an opposition filed by Frankie Morello Trademark S.R.L. against Frankie4 IP 1 Pty Ltd’s international trademark application for the mark “FRANKIE4” in class 25 (footwear) in the Benelux region. The opposition is based on the earlier European trademark registration for “FRANKIE MORELLO” owned by the plaintiff. The plaintiff alleges a likelihood of confusion between the signs and claims that the defendant’s application should not be registered.

Decision: The BENELUX Office for Intellectual Property (BOIP) considered the likelihood of confusion, visual and phonetic similarity, and the identity of the goods in question. The trademark invoked consists of the elements “FRANKIE” and “MORELLO,” while the contested sign includes “FRANKIE” and the number “4.” The BOIP found the signs to be visually and aurally similar to a certain extent.

After evaluating the overall impression on the average consumer and the normal distinctiveness of the earlier trademark, the BOIP concluded that there is a likelihood of confusion. Taking into account the interdependence of various factors, including the similarity between the signs and the identical goods, it determined that the relevant public may believe that the goods originate from the same or economically linked undertakings. As a result, the BOIP justified the opposition and rejected the registration of the contested sign.

The defendant was ordered to pay the opponent 1,045 euros as provided by the applicable law. This decision constitutes an enforceable order.

Decision Breakdown

A.1. Proof of Use:

  • The opponent is required to provide proof of genuine use of the trademark invoked during the relevant period, which is five years prior to the filing or priority date of the contested trademark.
  • The evidence must demonstrate that the trademark was used publicly and outwardly, taking into account the relevant economic sector and market characteristics.
  • Genuine use cannot be proven by probabilities or suppositions but requires solid and objective evidence of effective and sufficient use.

Analysis of the Proof of Use:

  • The opponent submitted various exhibits, including screen-prints of websites, invoices, company information, news articles, look books, and cancellation decisions.
  • The evidence showed genuine use of the invoked trademark for clothing, but there were no clear references to bags, footwear, and headgear.
  • The volume of sales was not negligible, and the use took place in several countries of the European Union.
  • The Office concluded that the evidence sufficiently demonstrated genuine use of the trademark for clothing.

A.2. Likelihood of Confusion between Frankie Morello and FRANKIE4:

  • A prior trademark holder can file an opposition against a trademark that, due to its identity or similarity to the earlier trademark and the identity or similarity of the goods or services covered, creates a likelihood of confusion.
  • Likelihood of confusion exists if the public may believe that the goods or services designated by the trademarks come from the same undertaking or economically linked undertakings.
  • The likelihood of confusion is assessed globally, considering factors such as the degree of similarity between the signs, the goods or services, the recognition of the earlier trademark, and its distinctiveness.

Comparison of the Signs:

  • The degree of similarity between the conflicting signs should be assessed in terms of visual, phonetic, and conceptual aspects, considering the overall impression they create.
  • The average consumer perceives a mark as a whole and does not analyze its various details.
  • The signs to be compared are “FRANKIE MORELLO” (opponent) and “FRANKIE4” (opposition directed against).

Conceptual Comparison:

  • Both signs contain the first name “FRANKIE,” but the absence of a concept associated with this name makes a conceptual comparison impossible.
  • The reference to the number “4” in the contested sign does not create a clear and comprehensible conceptual difference.

Visual Comparison:

  • Both signs share the element “FRANKIE” at the beginning, which attracts the most attention.
  • The signs differ in the additional word “MORELLO” in the invoked trademark and the additional number “4” in the contested sign.
  • The signs are similar to some extent.

Phonetic Comparison:

  • The invoked trademark consists of five syllables: FRAN-KIE-MO-REL-LO, while the contested sign is pronounced in three syllables: FRAN-KIE-FOUR.
  • The first two syllables are pronounced identically, and the public pays more attention to the first part of a sign.
  • The signs differ in the pronunciation of the additional elements, “MORELLO” and “FOUR.”
  • The signs are phonetically similar to a certain degree.

Comparison of the Goods of Frankie Morello and FRANKIE4:

  • The goods to be compared are “clothing” (opposition based) and “footwear” (opposition directed against).
  • The goods in class 25 (clothing) are identical, as explicitly stated by the defendant.

Global Assessment:

  • The global assessment considers the average consumer, who is reasonably well-informed and observant.
  • The level of attention of the average consumer varies depending on the goods or services.
  • The distinctiveness of the earlier trademark and its reputation on the market are factors in the likelihood of confusion assessment.
  • In this case, the Office finds that the trademark invoked, including the element “FRANKIE” alone, has normal distinctiveness and is not descriptive for the goods concerned.
  • The goods are identical, and the signs are visually and aurally similar to a certain degree.
  • Based on these factors and their interdependence, the Office concludes that there is a likelihood of confusion.

B. Other Factors:

  • The actual use of the signs cannot be taken into account in opposition proceedings.

C. Conclusion:

  • The Office concluded that there was a likelihood of confusion, and the opposition was justified.
  • The international application would not be registered.
  • The defendant was ordered to pay the opponent a specified amount.

Internship [stage] or other jobs at Backstage Legal?

Are you interested in an internship at Backstage Legal or do you want to start as a paralegal in the creative industry? Maybe switch offices or become a partner? Check our job openings page and send in your application, together with your motivational letter, resume and list of grades.


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