azzardo | Decision 2736059

Date Published: Sep 25, 2017

OPPOSITION No B 2 736 059

Loris Azzaro B.V., Kanaalpad 61, 7321 AN Apeldoorn, The Netherlands (opponent), represented by T Mark Conseils, 9 avenue Percier, 75008 Paris, France (professional representative)

a g a i n s t

Stefano Luddeni  Della Fattoria, 53031 Casole d'elsa, Italy (applicant), represented by Studio Valletti Baldi, via cicerone 28, 00193 Rome, Italy (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 736 059 is partially upheld, namely for the following contested goods:

Class 9: Glasses; waling glasses; ski glasses; optical glasses; reading glasses; cyclists' glasses; eye glasses; magnifying glasses; theatre glasses; opera glasses; sight glasses [optical]; shooting glasses [optical]; lenses for glasses; sun glasses; field-glasses; protective glasses; sports' glasses; sports glasses.   

Class 18: Luggage, bags, wallets and other carriers; boxes made of leather; boxes of leather or leatherboard; cases of leather or leatherboard; casings, of leather, for springs.

Class 25: Clothing; headgear; hats.

2.        European Union trade mark application No 15 327 877 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 327 877. The opposition is based on European Union trade mark registration No 5 393 459. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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.

1. The goods

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

Class 3: Perfumery, beauty preparations, soaps, cosmetics, hair preparations.

 

Class 9: Eyewear, sunglasses; cases for the above. 

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags.

The contested goods are the following:

Class 9: Glasses; Waling glasses; Ski glasses; Optical glasses; Reading glasses; Cyclists' glasses; Eye glasses; Magnifying glasses; Theatre glasses; Opera glasses; Sight glasses [optical]; Shooting glasses [optical]; Lenses for glasses; Sun glasses; Field-glasses; Protective glasses; Sports' glasses; Sports glasses.   

Class 18: Luggage, bags, wallets and other carriers; Umbrellas and parasols; Sausage skins and imitations thereof; Saddlery, whips and animal apparel; Boxes made of leather; Boxes of leather or leatherboard; Butts [parts of hides]; Cases of leather or leatherboard; Casings, of leather, for springs; Valves of leather. 

Class 25: Clothing; Headgear; Hats.

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 9

The contested glasses; waling glasses; ski glasses; optical glasses; reading glasses; cyclists' glasses; eye glasses; magnifying glasses; theatre glasses; opera glasses; sight glasses [optical]; shooting glasses [optical]; lenses for glasses; sun glasses; field-glasses; protective glasses; sports' glasses; sports glasses are all types of glasses which overlap with the opponent´s eyewear, sunglasses. They are identical.

Contested goods in Class 18

The contested luggage overlaps with the opponent’s trunks and travelling bags. Therefore, they are identical.

The contested bags are similar to the opponent’s travelling bags. The goods have the same purpose (containers used for carrying things), target the same public and have the same distribution channels.

The opponent’s trunks and travelling bags are similar to the contested wallets and other carriers; cases of leather or leatherboard; casings, of leather, for springs. The goods can be manufactured by the same producers, can target the same public and are usually sold through the same distribution channels. These goods also have the same basic purpose, namely to store or carry items.

The contested boxes made of leather; boxes of leather or leatherboard are similar to trunks and travelling bags of the earlier mark. All these goods have the same purpose, namely to carry things. They may be produced by the same undertaking and are sold through the same sales outlets.

The contested umbrellas and parasols; sausage skins and imitations thereof (refer to natural casings made of a layer of the intestine of pigs, sheep, goats and cattle or to artificial casings used in the food industry); saddlery, whips and animal apparel (equipment for horses and instruments used for driving animals); butts [parts of hides]; valves of leather (specific articles made of leather) are not similar to any of the opponent’s goods. Although some of the goods covered by the earlier mark in Class 18 are also made of leather, they differ in their purpose, manufacturers and distribution channels. Therefore, they are dissimilar. It must be noted that ‘leather’ covered by the earlier mark does not protect articles made of leather but a raw material intended for use in industry rather than for direct purchase by the final consumer, which is not similar to the abovementioned contested goods. Further, the abovementioned contested goods have no points of similarity with the other goods covered by the earlier mark in Classes 3, 9 and 14 which do not relate to such goods. These goods are, therefore, dissimilar.

Contested goods in Class 25

The contested items of clothing and headgear are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The opponents goods made of these materials and not included in other classes (leather and imitations of leather) in Class 18 include goods such as bags, handbags, sports bags, briefcases, wallets, purses, key cases, etc. They are also articles of fashion.

Therefore, these goods are considered similar to a low degree in the sense that they are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing and headgear because they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets.

2. 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 found to be identical and similar to varying degrees are directed at the public at large. The degree of attention is average.

3. The signs

AZZARO
Earlier trade mark	Contested sign

The relevant territory is the EU.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier word mark ‘AZZARO’ has no meaning the European Union. The verbal element in the contested sign, ‘AZZARDO’, has no meaning in the majority of the territories of the European Union, for example, in those countries where Italian is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French, Spanish and English-speaking part of the public.

The contested sign is a composite mark consisting of the word ‘AZZARDO’ and two devices: a red, yellow and blue jester’s hat resting on the letter ‘O’, and an elongated rectangle in the colours of the Italian flag, upon which the word AZZARDO rests. The latter device will be associated by the public with the colours of the Italian flag and perceived as an indication of the geographical origin of the relevant goods. It therefore has little or no trade mark significance.  

The contested sign does not contain any element that could be considered clearly more dominant (visually eye-catching) than other elements.

The verbal elements ‘AZZARO’ and ‘AZZARDO’ are not descriptive or lacking distinctiveness for the relevant goods for the public in the relevant territory; they do not describe or allude to any of the goods’ essential characteristics.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (AZZAR) the one that first catches the attention of the reader.

Visually, the signs coincide in the letters ‘AZZAR’ and ‘O’ and differ in the additional letter ‘D’ of the contested sign, as well as the stylisation, colours and figurative elements.

The signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in ‘AZZAR’ and ‘O’ and differs in the additional letter ‘D’ of the contested sign. The marks have almost the same length. The letter ‘D’ only present in the contested sign, being at the end of it, is less noticeable.

Therefore, the signs are highly similar aurally.

Conceptually, although the public will associate the flag device of the contested sign with Italy, and recognise the jester’s hat, this conceptual difference does not have any impact.

However, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

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 mark has been extensively used and enjoys 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 mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical, similar to different degrees and dissimilar to the opponent’s goods.

The marks (AZZARO vs AZZARDO) have almost the same length and their pronunciation is highly similar.

The stylisation and additional figurative elements of the contested sign, which are not particularly fanciful and memorable, are not striking enough to substantially modify the visual perception. Rather, the relevant public will tend to focus on the word elements, in accordance with established case-law (16/09/2013, T-569/11, Gitana, EU:T:2013:462, § 56; 06/09/2013, T-349/12, Revaro, EU:T:2013:412, § 23).

The difference in only one letter and graphic elements is not sufficient to differentiate the marks.

As a result, given the principle of consumers’ imperfect recollection, i.e. that consumers often do not have the opportunity to compare marks side by side at the same time but must place their trust in the imperfect picture of the signs kept in mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), in the present case, the relevant public will be prone to remember the similarities rather than the dissimilarities between the marks in the presence of identical and similar goods, and thus be led to believe that there is at the very least some association as regards their commercial origin.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French, Spanish and English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to varying degrees to those of the earlier trade mark. This conclusion furthermore stands for the contested goods which have been found to be similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the goods which only have a low degree of similarity.

The contested goods umbrellas and parasols; sausage skins and imitations thereof saddlery, whips and animal apparel; butts [parts of hides]; valves of leather in Class 18 are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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

The examination will continue on the basis of the other ground claimed by the opponent, namely Article 8(5) EUTMR for the goods found dissimilar.

REPUTATION – ARTICLE 8(5) EUTMR

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 abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. 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.

2. Reputation of the earlier trade mark

According to the opponent, ‘AZZARO’ enjoys a high degree of recognition among the relevant public in the European Union for perfumery in Class 3.

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 12/04/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the EU 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 3: Perfumery.

However, for reasons of procedural economy, the evidence filed by the opponent to prove its claim will not be assessed and the Opposition Division will continue on the assumption that the earlier mark does have a reputation for perfumery in Class 3.

3. The ‘link’ between the signs

The earlier mark is assumed to be reputed and the signs are visually and aurally similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 27, 29 and 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58 and 66).

The Court established in 12/03/2009, C-320/07 P, Nasdaq, EU:C:2009:146, § 43, that the types of injury referred to in Article 8(5) EUTMR, where they occur, are the consequence of a certain degree of similarity between the earlier and the later marks, by virtue of which the relevant public makes a connection between those two marks, that is to say, it establishes a link between them, although it does not confuse them. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. According to the same judgment (12/03/2009, C-320/07 P, Nasdaq, EU:C:2009:146, § 45), the existence of the link must be subject to an overall assessment taking into account all factors relevant to the circumstances of the case and, in particular, the degree of similarity between the marks at issue, the nature of the goods or services for which the marks at issue are registered, the relevant section of the public, the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character.

The opponent points out that the earlier trademark at hand ‘AZZARO’ is ‘'known for high quality perfumery products and significant investments over several decades have been made in order to create and maintain its distinct image among the consumers”.

The opponent states that given the strong reputation of the earlier trade mark, “the opposed trademark application would misappropriate the earlier trademark and take unfair advantage out of the opponent’s expenditure on promoting the image of its brand” and that “there is a risk that the image of the earlier trademark at stake is transferred to the opposed trademark application, with the result that the marketing of

those goods commercialized under the opposed trademark application is made easier by their association with the reputed earlier trademark”.

The earlier mark is assumed to be reputed for perfumery in Class 3 in the European Union.

The contested goods are umbrellas and parasols; sausage skins and imitations thereof; saddlery, whips and animal apparel; butts [parts of hides]; valves of leather in Class 18.

The Opposition Division finds that the difference between the reputed perfumery and the contested goods is too great to be able to conclude that consumers will call to mind the earlier reputed mark when exposed to the contested mark.

The differences in nature, purpose and method of use between the contested goods on one hand and the goods for which a reputation has been assumed on the other, as well as the divergent distribution channels, sales outlets, different producers and providers, make it improbable that the public will make a link between the signs in dispute.  

The issue here is not simply that the goods are dissimilar, since Article 8(5) EUTMR specifically covers dissimilar goods and services, but weighing up the plausibility of the claim that the consumer when confronted with the contested sign on the above mentioned goods will make an immediate mental link with the earlier mark. Since there is no proximity in the economic sectors of the opponent’s goods and the contested goods, it is far-fetched to conclude that the consumer will be reminded of the earlier mark when coming into contact with the contested sign.

However, nothing in the opponent’s submissions amounts to a claim that the reputation of the earlier mark is of such a magnitude as to cause consumers to call it to mind when they see a highly similar mark (though not identical) on totally unrelated goods or services. Marks such as Google, Facebook, Coca-Cola and Nike, for example, have such a powerful brand reach and are so visible that they are integrated into most people’s daily lives, so that even if the mark Google is placed on a product as ordinary and singular as sausage skins, the consumer will in all likelihood call the famous brand instantly to mind (without necessarily believing that the product has anything to do with Google). The opponent has not gone as far as to argue that its mark, which undoubtedly has a strong reputation in its sector, enjoys the kind of universal recognition that the above-mentioned marks do.  

There must be a clear set of circumstances and arguments, in addition to the evidence of reputation filed, that would explain why consumers of different goods from those protected by the reputed brand, would be likely to immediately call to mind the earlier mark. No such explanation has been forthcoming in these proceedings.      

In its evidence the opponent states that “these goods target the same public and that they are likely to be distributed and offered for sale to the public through the same channels of trade (e.g. shops, department stores), i.e. perfumes, clothing and accessories are subjected to the same commercial practice of bearing the same trademark, belonging to the same “fashion” category and that “it is common business practice in the beauty industry, indifferent to the market segment the respective actor is initially acting in, to create a universe of a brand including perfume, accessories such as glasses, goods made out of leather, headgear, and clothing”.

It is clear from the arguments that the opponent refers to goods that have nothing in common with “umbrellas and parasols; sausage skins and imitations thereof saddlery, whips and animal apparel; butts [parts of hides]; valves of leather.” They are not related to fashion or the beauty industry.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. 

Therefore, the opposition is not well-founded under Article 8(5) EUTMR as regards the dissimilar goods mentioned above.

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 shall 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

Rhys MORGAN

Birgit FILTENBORG

Loreto URRACA LUQUE

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.