Chiara Ferragni is one of the most famous fashion bloggers-turned-influencers in the world. More than 16 million Instagram users look to her for style cues and stock up on her Chiara Ferragni Collection wares, which, when combined with the money that 31-year old Ferragni makes as a super-influencer, totaled €30 million in revenue last year. But in building up her brand, which consists of high-profile partnerships and her eponymous womenswear label, Ferragni hit a roadblock in 2015. She could not register her name, and has been embroiled in a behind-the-scenes battle ever since.
Complications arose almost immediately after legal counsel for Ferragni – who has fronted campaigns for brands ranging from Louis Vuitton to Amazon Fashion – sought to register her famous name as a trademark with the European Union Intellectual Property Office (“EUIPO”) in 2015. According to the application, Milan-based Ferragni’s trademark consists of her full name in black typeface along with a blue-eyed graphic for use on clothing, swimwear, undergarments, footwear, and accessories, including handbags.
The problem? In response to Ferragni’s filing, CKL Holdings NV called foul. It turns out, the Dutch company – which is owned by entertainment entrepreneur and active trademark-filer Michael Gleissner – already has a registration for the word “Chiara” in the Benelux for use on clothing and accessories. Gleissner’s registration for the popular Italian woman’s name joins a long list of name-based trademarks held by CKL Holdings NV – from Alexander, Ashley, Donald, Elizabeth, and Emily to Harry, John, Mario and Peter. The company maintains registrations for many of those names, among others, save for “Alexander,” which was rejected by the UK Intellectual Property Office in January 2018. The UK IPO determined that CKL Holdings has no sound business reason to use (or claim a monopoly on) the mark.
Much like a handful of the other oppositions that CKL Holdings has filed before, it argued that Ferragni’s proposed mark is so similar to its own, CKL Holdings argued, that if the EUIPO registered Ferragni’s mark, it would be damaged due to potential consumer confusion.
CKL Holdings’ mark (left) & Serendipity’s mark (right)
For the most part, the EUIPO’s Opposition Division agreed, asserting that due to the similarity of the two trademarks, there was, in fact, a likelihood that consumers might be confused as to the source of the goods upon which the marks would appear and thus, think that two unaffiliated companies’ products are connected in some way. As such, the Opposition Division refused to register Ferragni’s mark in connection with all of the goods in class 25 (the trademark class that covers clothing and footwear), and at least some of the goods in class 18 (namely, leather goods).
With a loss in hand, Serendipity Srl – the corporate arm of Ferragni’s brand – appealed the decision to the EUIPO Board of Appeal, only to suffer another loss.
Ultimately, the matter ended up before the Court of Justice of the European Union (“CJEU”), and it is here that Serendipity Srl would land a victory. According to a decision from CJEU’s General Court last month, the two trademarks – “Chiara” and the “Chiara Ferragni” – are not so similar that they cannot coexist on the same types of goods. In addition to pointing to the importance of Serendipity’s inclusion of the eye logo in its mark as a distinguishing factor, the General Court held that the marks are different in that “Chiara Ferragni” refers to a specific person, where as “Chiara” is merely a women’s name.
More than that, the court stated despite the similar uses of the word “Chiara,” Serendipity’s use of “Ferragni,” despite being at the end of the mark is, given its length, phonetically more important than the word “Chiara.
With the foregoing in mind, the General Court determined that the EUIPO was wrong for refusing the register the “Chiara Ferragni” mark and sent the case back down for registration, unless, of course, CKL Holdings appeals the case to the higher Court of Justice.
As of the time of publication, no such appeal has been initiated.
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