Not only has Brioni lost (or more likely, ousted) its creative director, Justin O’Shea, roughly six months after his appointment, the Italian design house has lost a recent trademark battle in Russia, as well. The brand – which is owned by Gucci, Balenciaga, and YSL parent company, Kering – was dealt a blow this week when ROSPATENT, the Russian Patent and Trademark Office, rejected its request to invalidate an existing trademark for the word, “Bioni.” The latter mark is held by JSC Arnet, a Russian entity in the business of manufacturing and packaging fragrances and cosmetics.
According to Brioni’s complaint, which was filed earlier this year, the “Bioni” mark is too similar to its own, and is thereby likely to cause confusion among consumers as to the source of the “Bioni” goods, namely, as to whether they are affiliated with or connected to the Italian design house. Brioni argued in its initial filing that such confusion is certainly bolstered by the fact that both parties’ marks are registered in Int. Class 3, the class of goods that covers “soaps; perfumery, essential oils, [and] cosmetics.”
JSC Arnest responded, arguing that the two trademarks are not similar to each other in whole as the first syllables – “BI” and “BRI” – “cannot be seen as identical or even similar,” adding that it is the first part of a word that the consumer concentrates on when he/she reads a word. In arguing the legitimacy of its mark, JSC Arnest, which is one of the largest Russian manufacturers of perfumery-cosmetic products, also noted that the first part of its trademark – “BIO” – is widely used in compound words, and implies the existence of natural or organic substances.
Siding with JSC Arnest, ROSPATENT held this week that the two trademarks are not likely to confuse consumers, particularly because the famous Italian fashion house uses a stylized version of the trademark, further distinguishing it from the “Bioni” mark, which utilizes a different front. (Note: the court was referring to the pre-Justin O’Shea trademark, and not the recently adopted gothic lettering one that O’Shea fashioned for the brand).
No word yet on whether Brioni will appeal.