ANNA + NINA | Decision 2741133

Date Published: Sep 24, 2017

OPPOSITION No B 2 741 133

Wenna GmbH, Plankengasse 1, 1010 Wien, Austria (opponent), represented by Dorda Rechtsanwälte Gmbh, Universitätsring 10, 1010 Wien, Austria (professional representative)

a g a i n s t

Anna + Nina B.V., Kloveniersburgwal 44 A, 1012 CW Amsterdam, The Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative).

On 23/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 741 133 is partially upheld, namely for the following contested goods and services:

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, namely amulets, bracelets and anklets, chains, pendants, clocks, beads for making jewellery, works of art, lockets, cufflinks, earrings, lapel pins, rings, diamonds; Key rings [trinkets or fobs], Ornamental pins and tie pins; Works of art of precious metal; Jewels; Jewels; Precious stones; Time instruments; Time instruments; Jewels; Diamonds; Jewel cases; Boxes for clock- and watchmaking; Parts for clockworks; Bracelets for watches.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes, namely luggage labels, purses, pouches, credit card holders and key cases; Bags, purses, wallets, handbags, holdalls, suitcases and valises, travelling cases, attaché cases and diplomatic bags; Cosmetics bags [not fitted]; Make-up bags and cases.

Class 25: Clothing, footwear, headgear; Belts [clothing]; Shawls; Topcoats; Kimonos; Bathwraps.

Class 35: Advertising; Business management; Publicity and sales promotion; Marketing services; Promotion of goods and services of others; Mediation of advertising; distribution of advertising matter; Merchandising; Retailing and wholesaling in relation to fashion accessories, jewellery, horological and chronometric instruments; Retailing and wholesaling in relation to goods of leather, bags, purses; Arranging and conducting of promotional events and activities, including openings, demonstrations and product presentations; Arranging and conducting publicity and advertising events; Dissemination of advertising articles and advertising material; Publicity; Public relations services; Business management, Business consultancy, business management consultancy; Negotiating and concluding commercial transactions for others; Market prospecting, research and analysis; Opinion polling; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet.

Class 42: Design and development of goods of bags, purses; fashion accessories; jewellery, horological and chronometric instruments; the aforesaid services also via electronic channels, including the Internet.

2. European Union trade mark application No 15 248 594 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 248 594. The opposition is based on European Union trade mark registrations No 11 479 821, No 8 735 045 and No 11 479 748. The opponent invoked Article 8(1)(b) EUTMR in relation to the above-mentioned earlier rights and Article 8(5) EUTMR in relation to the European Union trade mark registration No 8 735 045.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 11 479 821 and No 8 735 045.

The goods and services

The goods and services on which the opposition is based are the following:

European Union trade mark registration No 11 479 821:

Class 3: Soaps; perfumery.

Class 18: Handbags, purses and wallets; sling bags.

Class 35: Advertising for soaps and perfumery, and for jewellery, and for handbags, purses and shoulder bags.

European Union trade mark registration No 8 735 045:

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

The contested goods and services are the following:

Class 16: Paper, cardboard; Newsletters, Books, Newspapers, Magazines [periodicals], Leaflets, Printed folded sheet articles, Agendas, Printed matter and Other texts and Publications; Bookbinding material; Photographs; napkins; Cards; Posters, framed or unframed; Stationery and Parts therefor; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office stationery; Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 20: Furniture, mirrors, picture frames; Unworked or partly worked bone, horn, ivory, whalebone or mother-of-pearl; Shells; Meerschaum; Yellow amber; Ornaments, furnishing accessories and interior decor of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; Statues, Figurines, Objets d'art, ornaments and decorations; Door, gate and window fittings and bathtub grab bars, not of metal; Curtain tie-backs; Cookbook holders; Cushions

Class 24: Textiles and textile goods, not included in other classes; Bed covers; Table covers; Pillowcases; Bed blankets; Travelling rugs [lap robes].

Class 25: Clothing, footwear, headgear; Belts [clothing]; Shawls; Underwear; Lingerie; Topcoats; Kimonos; Bathwraps.

Class 35: Advertising; Business management; Business administration; Office functions; Publicity and sales promotion; Marketing services; Promotion of goods and services of others; Mediation of advertising; distribution of advertising matter; Merchandising; Commercial intermediation services; Import, export, retailing and wholesaling in relation to fashion accessories, clothing, footwear, headgear, belts, shawls, underwear, lingerie, industrial oils and greases, candles, ornaments, jewellery, horological and chronometric instruments, jewellery cases, cases for clock- and watchmaking, books, diaries, calendars, posters, photographs, cards; Import, export, retailing and wholesaling in relation to printed matter, stationery, office stationery, goods of leather, bags, purses, laptop bags, telephone cases, furniture, lights, crockery, cutlery, interior design, furnishing accessories, household or kitchen utensils and containers, unworked or semi-worked glass, glassware, porcelain and earthenware, cosmetic and toilet utensils and bathroom articles, textiles and textile goods, bed covers, table covers, pillowcases; Import, export, retailing and wholesaling in relation to blankets and other consumer goods and the bringing together, for the benefit of others, of the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; Arranging and conducting of promotional events and activities, including openings, demonstrations and product presentations; Arranging and conducting publicity and advertising events; Dissemination of advertising articles and advertising material; Publicity; Public relations services; Business management, Business consultancy, business management consultancy; Business consultancy relating to franchising; Management of personnel; Negotiating and concluding commercial transactions for others; Administrative handling of orders and related sales orders; Compilation of statistics; Market prospecting, research and analysis; Opinion polling; Compilation of information into computer databases; Data file administration; Organisation of trade fairs and exhibitions for commercial or advertising purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of fashion accessories, clothing, footwear, headgear, belts, shawls, underwear, lingerie, industrial oils and greases, candles, ornaments, jewellery, horological and chronometric instruments, jewellery cases, cases for clock- and watchmaking, books, diaries, calendars, posters, photographs, cards, printed matter, stationery, office requisites; Design and development of goods of leather, bags, purses, laptop bags, telephone cases, furniture, lights, crockery, cutlery, interior design, furnishing accessories, household or kitchen utensils and containers, unworked or semi-worked glass, glassware, porcelain and earthenware; Design and development of cosmetic and toilet utensils and bathroom articles, textiles and textile goods, bed covers, table covers, pillowcases, blankets and other consumer goods; Industrial design; Industrial design; Graphic design and graphic art services; Product design; Packaging design; Styling [industrial design]; Fashion design; Information and consultancy relating to the aforesaid services; The aforesaid services also via electronic channels, including the Internet.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 14

The contested amulets, bracelets and anklets, chains, pendants, clocks, beads for making jewellery, works of art, lockets, cufflinks, earrings, lapel pins, rings; key rings [trinkets or fobs], ornamental pins and tie pins; works of art of precious metal, bracelets for watches are included in the opponent’s broad category of precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes of the EUTM No 8 735 045. Therefore, these goods are identical.

The contested precious stones are identically included in the opponent’s list of goods related to the earlier EUTM No 8 735 045.

The contested jewels (mentioned three times in the applicant’s specification) are identical to the opponent’s jewellery of the earlier EUTM No 8 735 045.

The contested diamonds (mentioned twice) in the applicant’s specification are included in the opponent’s precious stones of the earlier EUTM No 8 735 045. Therefore, these goods are identical.

The contested time instruments mentioned twice in the applicant’s specification are included in the opponent’s horological and chronometric instruments of the earlier EUTM No 8 735 045. These goods are identical.

The contested boxes for clock- and watchmaking; jewel cases; parts for clockworks are either parts of clocks, or constitute various objects of art, prepared for decorative purposes. Since all these objects are prepared from precious metals or coated therewith (Class 14), they are prepared by jewellers or watchmakers. They all have the same manufacturers, and are sold in specialist shops. As a consequence, these goods are similar to the opponent’s jewellery and horological and chronometric instruments of the earlier EUTM No 8 735 045.

Contested goods in Class 16

All the contested paper-related goods and stationery in this class are dissimilar to the opponent’s goods in Classes 3, 14 and 18. These goods have different nature, purpose, usual origin and method of use. A fortiori, they are dissimilar to the opponent’s services in Class 35. The opponent’s services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale. Therefore, these goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

Contested goods in Class 18

The contested purses (mentioned twice), wallets and handbags are mentioned identically in the opponent’s specification.

The contested bags include, as a broader category the opponent’s handbags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pouches, credit card holders and key cases are similar to the opponent’s wallets. Furthermore, they target the same end users and are often produced by the same companies and sold through the same distribution channels.

The contested holdalls, suitcases and valises, travelling cases, attaché cases and diplomatic bags; cosmetics bags [not fitted]; make-up bags and cases serve the same purpose as the opponent’s handbags namely to carry items. They can coincide in producer, distribution channel and end user. Therefore, they are considered to be similar.

The contested luggage labels are labels that identify the owner of a piece of luggage. These goods are lowly similar to the opponent’s wallets. They can coincide in distribution channels and end users.

The remaining contested animal skins, hides; umbrellas, parasols and walking sticks; whips, harness and saddlery do not have anything in common with the opponent’s handbags, purses and wallets; sling bags in the Class 18. The nature, purpose and method of use of the contested goods are clearly different. They are usually produced by different companies and are usually sold through different distribution channels. They do not target the same relevant public and are not in competition or complementary. The mere fact that the contested animal skins, hides are raw materials intended to be turned into finished products, cannot be regarded as complementary to the finished products like the opponent’s bags (made from these materials) (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39). Consequently, they are dissimilar. Likewise, they are dissimilar to the opponent’s soaps; perfumery in Class 3 and the goods made of precious metals in Class 14 because their nature and main purpose are different. They do not have the same distribution channels and are neither in competition, nor complementary. Furthermore, they are dissimilar to the opponent’s services in Class 35. Apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

Contested goods in Class 20

All the contested furniture and furnishing accessories are considered dissimilar to the opponent’s goods in Classes 3 and 14. Their nature and main purpose are different. They do not have the same distribution channels and are neither in competition, nor complementary. The same reasoning applies to goods such as handbags, purses and wallets; sling bags in Class 18 which are for carrying things. A fortiori, they are dissimilar to the opponent’s services in Class 35. These goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

Contested goods in Class 24

All the contested goods in this class are finished textile goods which are mainly used for covering objects (e.g. beds, tables, furniture), interior decoration and household purposes. They have nothing relevant in common with the opponent’s goods in Class 18 which cover handbags, purses and wallets; sling bags. This is because they differ in their purposes, natures and methods of use. Furthermore, they do not have the same relevant public, producers or distribution channels and are neither complementary to nor in competition with each other. Considering this, the goods are dissimilar. These goods are also dissimilar to the opponent’s soaps; perfumery in Class 3 and the goods made of precious metals in Class 14. Their nature and main purpose are different. They do not have the same distribution channels and are neither in competition, nor complementary. A fortiori, they are dissimilar to the opponent’s services in Class 35. As mentioned above, the opponent’s services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale.Therefore, these goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

Contested goods in Class 25

The contested clothing, footwear, headgear; belts [clothing]; shawls; topcoats; kimonos; bathwraps serve to cover/protect the human body. These goods are related to the opponent’s handbags. This is because consumers are likely to consider goods in Class 18 as accessories that complement articles of outer clothing. Furthermore, they may be distributed by the same or linked distributors and it is not unusual for manufacture of the opponent’s goods to directly produce and market the contested clothing, footwear, headgear; belts [clothing]; shawls; topcoats; kimonos; bathwraps. Moreover, many manufacturers and designers will design and produce all of the above-mentioned items. Therefore, these goods are similar.

The remaining contested lingerie; underwear is dissimilar to the opponent’s goods in Class 18. They have different natures, purposes and methods of use. Furthermore, they are not likely to be sold through the same outlets or channels, and they are not complementary or in competition. For the same reasons they are also dissimilar to the opponent’s goods in Classes 3 and 14. A fortiori, they are dissimilar to the opponent’s services in Class 35. As mentioned above, the opponent’s services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale.

Contested services in Class 35

The contested advertising; all the aforesaid services whether or not provided via electronic channels, including the Internet includes as a broader category the opponent’s advertising for soaps and perfumery, and for jewellery, and for handbags, purses and shoulder bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested publicity and sales promotion: promotion of goods and services of others; distribution of advertising matter; arranging and conducting of promotional events and activities, including openings, demonstrations and product presentations; arranging and conducting publicity and advertising events; dissemination of advertising articles and advertising material; publicity; all the aforesaid services whether or not provided via electronic channels, including the Internet refer to broader categories which overlap with the more specific opponent’s advertising for soaps and perfumery, and for jewellery, and for handbags, purses and shoulder bags. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested merchandising; all the aforesaid services whether or not provided via electronic channels, including the Internet have some relevant points in common with the opponent’s advertising for soaps and perfumery. These services can share the same general purpose and distribution channels, can be provided by the same undertakings and target the same users. Therefore, they are similar to a high degree.

The contested marketing services; mediation of advertising; all the aforesaid services whether or not provided via electronic channels, including the Internet have some relevant points in common with the opponent’s advertising for soaps and perfumery, and for jewellery, and for handbags, purses and shoulder bags as they coincide in nature, service provider, relevant public, and in distribution channels. Therefore, these services are similar.

The contested public relations services; all the aforesaid services whether or not provided via electronic channels, including the Internet are similar to the opponent’s advertising for soaps and perfumery, and for jewellery, and for handbags, purses and shoulder bags. They have the same purpose, providers and relevant public, and they are complementary.

The contested business management (mentioned twice); business consultancy, business management consultancy; negotiating and concluding commercial transactions for others; market prospecting, research and analysis; opinion polling; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are all business assistance services rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business.

When comparing business management with advertising (and such related activities as public relations, sales promotion, etc.), advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree to the opponent’s advertising for soaps and perfumery, and for jewellery, and for handbags, purses and shoulder bags.

The contested retailing and wholesaling in relation to fashion accessories; all the aforesaid services whether or not provided via electronic channels, including the Internet may cover handbags, purses or wallets and therefore these services are lowly similar to the opponent’s handbags, purses or wallets of the earlier EUTM No 11 479 821.

The contested retailing and wholesaling in relation to jewellery, horological and chronometric instruments; all the aforesaid services whether or not provided via electronic channels, including the Internet are lowly similar to the opponent’s jewellery, horological and chronometric instruments of the earlier EUTM No 8 735 045.

The contested retailing and wholesaling in relation to goods of leather, bags, purses; all the aforesaid services whether or not provided via electronic channels, including the Internet are lowly similar to the opponent’s handbags, purses of the earlier EUTM No 11 479 821.

The contested business consultancy relating to franchising is a specific service related to the practice of the right to use a firm's business model and brand for a prescribed period of time and serve to building "chain stores" to distribute goods that avoids the investments and liability of a chain. Therefore the purposes of the services under comparison are clearly different. Moreover, they are neither complementary nor in competition. Finally the services concerned would not normally be provided by the same undertakings, since the fields of activity are very different. In conclusion, the Opposition Division considers that these services are dissimilar to the opponent’s advertising for soaps and perfumery, and for jewellery, and for handbags, purses and shoulder bags in Class 35. A fortiori, they are dissimilar to the opponent’s goods in Classes 3, 14 and 18. These goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

The remaining contested business administration; office functions; import, export, retailing and wholesaling in relation to clothing, footwear, headgear, belts, shawls, underwear, lingerie, industrial oils and greases, candles, ornaments, jewellery cases, cases for clock- and watchmaking, books, diaries, calendars, posters, photographs, cards; Import, export, retailing and wholesaling in relation to printed matter, stationery, office stationery, laptop bags, telephone cases, furniture, lights, crockery, cutlery, interior design, furnishing accessories, household or kitchen utensils and containers, unworked or semi-worked glass, glassware, porcelain and earthenware, cosmetic and toilet utensils and bathroom articles, textiles and textile goods, bed covers, table covers, pillowcases; Import, export, retailing and wholesaling in relation to blankets and other consumer goods and the bringing together, for the benefit of others, of the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; management of personnel; administrative handling of orders and related sales orders; compilation of statistics; compilation of information into computer databases; data file administration; organisation of trade fairs and exhibitions for commercial or advertising purposes; commercial intermediation services; all the aforesaid services whether or not provided via electronic channels, including the Internet refer either to the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’ and they mainly cover activities that assist in the working of a commercial enterprise or they are related to the movement of goods (import export services) and to the action of selling goods or commodities (retailing and wholesaling services). Therefore, the purposes of the services under comparison are clearly different. Moreover, they are neither complementary nor in competition. Finally the services concerned would not normally be provided by the same undertakings, since the fields of activity are very different. In conclusion, the Opposition Division considers that these services are dissimilar to the opponent’s advertising for soaps and perfumery, and for jewellery, and for handbags, purses and shoulder bags. A fortiori, they are dissimilar to the opponent’s goods in Classes 3, 14 and 18. These goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

Contested services in Class 42

The contested design and development of bags, purses; the aforesaid services also via electronic channels, including the Internet are similar to a low degree to the opponent’s goods in Class 18, namely handbags, purses. Despite their different nature, the companies producing these goods usually provide also related services, such as the design and development of goods of bags, purses. They are directed at the same end users, are produced by the same companies.

For the same reasons the contested design and development of fashion accessories; the aforesaid services also via electronic channels, including the Internet are similar to a low degree to the opponent’s goods in Class 18, namely handbags. The fashion accessories include, inter alia, handbags.

Likewise, the contested design and development of jewellery, horological and chronometric instruments are similar to a low degree to the opponent’s jewellery, horological and chronometric instruments of the earlier EUTM No 8 735 045.

The remaining contested scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of clothing, footwear, headgear, belts, shawls, underwear, lingerie, industrial oils and greases, candles, ornaments, jewellery cases, cases for clock- and watchmaking, books, diaries, calendars, posters, photographs, cards, printed matter, stationery, office requisites; design and development of goods of leather, laptop bags, telephone cases, furniture, lights, crockery, cutlery, interior design, furnishing accessories, household or kitchen utensils and containers, unworked or semi-worked glass, glassware, porcelain and earthenware; design and development of cosmetic and toilet utensils and bathroom articles, textiles and textile goods, bed covers, table covers, pillowcases, blankets and other consumer goods; industrial design; industrial design; graphic design and graphic art services; product design; packaging design; styling [industrial design]; fashion design; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet are considered to be dissimilar to all the earlier services and goods of the earlier right. This is because the earlier right’s services are advertising for soaps and perfumery, and for jewellery, and for handbags, purses and shoulder bags which are all services directed at specific purposes and specific end users, and these are different purposes and end users from the contested scientific, research, design and industrial analysis services. Furthermore, these services will be carried out by different groups (scientists, researchers, etc. vs. advertising agencies) and therefore have different service providers, and given that they are directed at different end users they will also have different distribution channels. Finally, they are neither in competition with each other, nor are they complementary. The earlier goods in Classes 3, 14 and 18 have nothing in common with these contested services, they are therefore dissimilar.

Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar (including similar to a low degree) are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attention may vary from average to high, depending on the price, sophistication/specialised nature, or terms and conditions of the purchased goods and services.

The signs

EUTM registrations

No 11 479 821 and No 8 735 045

Image representing the Mark

ANNA + NINA

Earlier trade marks

Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier marks are figurative marks composed of the verbal element ‘ANNA’, although the second letter ‘N’ is upturned.

The contested sign is composed of two verbal elements ‘ANNA’ and ‘NINA’ conjoined with the mathematical symbol ‘+’.

It can be reasonably assumed that the significant part of the relevant public will associate the words ‘ANИA’ and ‘ANNA’ with a common female first name in the relevant territory, either because it exist as such in some languages (for example German, Polish) or through the use of close variations ‘Ana’ in Spanish, Bulgarian, Croatian, Portuguese, Romanian and Slovene, ‘Ann’ in English, Danish, Estonian, Swedish, ‘Anne’ in French. The distinctiveness per se of the coincident words ‘ANИA’ / ‘ANNA’ in relation to the goods and services in question is normal.

Likewise, the word ‘NINA’ of the contested sign will be associated by the significant part of the relevant public with a feminine given name. The inherent distinctiveness of this element in relation to the goods and services under dispute must be seen as normal.

The mathematical symbol ‘+’ conjoining both names in the contested sign will be understood as such by the relevant public in the relevant territory.

Neither sign has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in ‘ANNA’, although the second letter ‘N’ in the earlier marks is represented in a more stylised way (upturned). ‘ANИA’ of the earlier marks is the only verbal element of the marks. The signs differ visually and aurally in the additional (secondary) elements: the word ‘NINA’ and the element ‘+’, both present in the contested sign. Consequently, bearing in mind the above-mentioned, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks in question will be associated with a similar meaning of the word ‘ANNA’. As mentioned above, the impact of the term ‘NINA’ and the conjoining element ‘+’ is reduced due to their secondary position within the contested sign. Therefore, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods and services at issue are partially identical, partially similar to varying degrees and partially dissimilar to the ones covered by the earlier marks. They are directed at the public at large and the professional public with the degree of attention which will vary from average to high.

The distinctiveness per se of the earlier trade marks as a whole is normal.

In the present case the signs are considered visually, aurally and conceptually similar to an average degree. In particular, the marks are similar to the extent that they include the element ‘ANNA’ that is the only element of the earlier marks and the first and independent element within the contested sign. The differences between the signs are reduced to the mathematical symbol ‘+’ and the word ‘NINA’, which plays a secondary role in the contested sign because they occupy a less prominent position in it in comparison to the element ‘ANNA’. Therefore, these differences are, not enough to dispel the existence of a strong similarity between the marks.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registrations No 11 479 821 and No 8 735 045.

It follows that the contested trade mark must be rejected for the goods and services found to be identical and similar to varying degrees (including similar to a low degree) to those of the earlier marks.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark registration No 11 479 748, registered for the figurative mark and covering goods and services in Classes 3, 14, 18 and 35.

The other earlier rights invoked by the opponent are less similar to the contested mark because it contains further word elements, which are not present in the contested sign. Moreover, it covers the same scope of the goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

The Opposition Division will now continue with the examination on the ground of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

As mentioned above, the Opposition Division will now examine the opposition in relation to earlier European Union trade mark registration No 8 735 045, registered for the figurative mark Image representing the Mark , for which the opponent claimed repute in the European Union and, in particular, in Austria.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR because the earlier mark in question is identical to the one analysed above under Article 8(1)(b) EUTMR.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union and, in particular, in Austria.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 21/03/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union, and in particular, in Austria prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 15/12/2016 the opponent submitted the following evidence:

Annex B: Samples of images (undated) of opponent’s products (jewellery) together with the earlier mark, depicted on packages.

Annex C: Photographs of the opponent’s local stores (window shopping) in Vienna, Munich and London, dated 12/12/2016.

Annex D: Screenshots of the opponent’s websites showing the earlier mark in question, dated 12/12/2016. They also show the opponent’s another earlier mark, in relation to which the opponent did not invoke Article 8(5) EUTMR.

Annex E: Screenshots of social platforms indicating opponent’s earlier. According to the opponent this trade mark and the opponent’s products are very well known by the targeted public (nearly 40.000 likes on Facebook, 1000 followers on Pinterest and over 47.000 followers on Instagram), dated 12/12/2016.

Annex F: Screenshots of the internet search engine Google demonstrating that the opponent’s website and the opponent’s earlier is the second search result, dated 12/12/2016.

Annex G: Press articles in German together with translations containing references to the opponent’s goods and word trade marks ‘Anna’, ‘ANNA INSPIRING JEWELLERY’, dated 12/12/2016 or referring to winter 2016 (partly also undated).

Annex H: 20 Invoices, dated 30/11/2016, 10/12/2016, 11/12/2016 and 12/12/2016) directed to different clients in Austria and Germany and representing the total sales amount of more than EUR 14.000.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

First, the Opposition Division notes that, to prove the reputation of a mark, it is not sufficient that the mark is used. Instead it needs to be shown that the mark is known by a significant part of the public concerned by the products covered by it.

In the present case, the majority of the evidence is dated after the filing of the contested sign or is undated. This is the case with annexes B, C, D, E, F, G and H. The evidence that post-dates the filling date of the EUTM application will not usually be sufficient on its own to prove that the mark had already acquired a reputation when the EUTM was filed. Such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence. In the subsequent observations filed with the Office on 05/05/2017 the opponent remedied this situation and clearly indicated the dates on printed documents included in annex G, which refer to the relevant period. In this context the Opposition Division notices that the materials filed with a view to proving reputation must be dated, or at least clearly indicate when the facts attested therein took place. Consequently, the press articles containing references to the opponent’s goods and to the word marks ‘Anna’, ‘ANNA INSPIRING JEWELLERY’ refer to the relevant period.

Part of the evidence, namely annexes D, E, F and G relates to the opponent’s other figurative earlier mark or to its word representation in relation to which the opponent does not claim the repute. The whole evidence as filed by the opponent does not make any indication of the longevity of the mark in question or the degree of recognition. In this regard, the Opposition Division notes that screenshots of social platforms indicating the number of ‘likes’ or the number of followers on Instagram are not enough on their own to show the degree of recognition of the earlier trade mark in the relevant territory by the relevant public. This information is not capable by itself of indicating the acquisition of a reputation within the European Union and, in particular in Austria, for the earlier mark upon which the opposition is based. The evidence does not contain any information about the yearly turnover, the opponent’s investments in the promotion of its earlier mark, and market shares in relation to the goods in question. In this regard, a very substantial market share, or a leader position in the market will usually be a strong indication of reputation, especially if combined with a reasonable high degree of the trade mark awareness. The remaining items, namely 20 invoices (Annex H), photographs from shops (Annex C) and the selection of various printed articles (Annex G) clearly show the opponent’s various trade marks being used, but provide no indication of degree of recognition of the relevant public.

The evidence does not indicate the market share of the trade mark or provide concrete information on the extent to which the trade mark has been promoted. It does not include market surveys or opinion polls regarding the marks. Finally, the evidence originates almost entirely from the opponent, and there are no independent third parties items that refer to the marks and which begin to mention or inform the Opposition Division of the objective and actual degree of recognition of the public of this earlier mark.

Therefore, the Opposition Division is of the opinion that despite showing some use of the earlier trade mark the evidence does not provide any real information on the extent of the public recognition of the earlier mark in relation to which the opponent invoked Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as this ground is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Benoit VLEMINCQ

Monika CISZEWSKA

Gueorgui IVANOV

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

ANNA + NINA | Decision 2741133

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