Brinny | Decision 2685033
Date Published: Sep 24, 2017
OPPOSITION No B 2 685 033
Brioni S.p.A., Piazza Di San Bernardo, 101, 00187 Roma, Italy (opponent), represented by Santarelli, 49, avenue des Champs Elysées, 75008 Paris, France (professional representative)
a g a i n s t
Shenzhen HongAnShun Trade Co. Ltd., 201B, Huiyida Technology Building, Tiancheng Road, Taoxiaxin Village, Dalang Street, Longhua, Shenzhen 518131, People’s Republic of China (applicant), represented by Süle Law Firm, Budapest, Frankel Leo u. 84. 1/7, 1023, Hungary (professional representative).
On 17/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 685 033 is upheld for all the contested goods.
2. European Union trade mark application No 14 974 869 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 974 869 . The opposition is based on, inter alia, European Union trade mark registration No 96 511
. The opponent invoked Article 8(1)(b) 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.
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 registration No 96 511.
- The goods
The goods on which the opposition is based are the following:
Class 18: Leather and imitations of leather and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
After the restriction of the goods requested by the applicant on 24/10/2016, which was accepted by the office on 25/10/2016 and duly communicated to the opponent, the contested goods are the following:
Class 18: Luggage, bags, wallets and other carriers; sausage skins and imitations thereof; umbrellas and parasols; animal skins; boxes made of leather; boxes of leather or leather board; butts [parts of hides]; casings, of leather, for springs; cattle skins; chamois leather, other than for cleaning purposes; chin straps, of leather; curried skins; faux fur; furniture coverings of leather; furs sold in bulk; girths of leather; goldbeaters' skin; imitation leather; imitation leather sold in bulk; industrial packaging containers of leather; kid; leather and imitation leather; leather cloth; leather for furniture; leather for shoes; leather laces; leather sold in bulk; leather straps; leather thread; leather, unworked or semi-worked; leatherboard; moleskin [imitation of leather]; polyurethane leather; rawhide chews for dogs; semi-worked fur; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; shoulder belts; shoulder straps; straps for skates; straps for soldiers' equipment; straps made of imitation leather; studs of leather; trimmings of leather for furniture; valves of leather; worked or semi-worked hides and other leather.
Class 25: Clothing; footwear; headgear; hats.
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 18
Umbrellas and parasols; animal skins; imitation leather; leather and imitation leather are identically contained in both lists of goods.
The contested luggage includes, as a broader category the opponent’s trunks. 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 bags and other carriers include, as a broader category the opponent’s travelling bags. 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 chamois leather, other than for cleaning purposes; furniture coverings of leather; kid; leather cloth; leather for furniture; leather for shoes; leather sold in bulk; leather, unworked or semi-worked; leatherboard; sheets of leather for use in manufacture; worked or semi-worked hides and other leather are included in the broad category of the opponent’s leather. Therefore, they are identical.
The contested faux fur; imitation leather sold in bulk; moleskin [imitation of leather]; polyurethane leather; sheets of imitation leather for use in manufacture are included in the broad category or overlap with the opponent’s imitations of leather. Therefore, they are identical.
The contested butts [parts of hides]; cattle skins; curried skins; furs sold in bulk; goldbeaters' skin; semi-worked fur are included in the broad category of the opponent’s animal skins. Therefore, they are identical.
The contested wallets and the opponent’s clothing may be distributed by the same distribution channels, they may be produced by the same manufactures and coincide in the relevant public. Therefore, they are considered similar.
Sausage skins are derived from the intestinal tract of farmed animals, namely from an internal layer of the intestine. Imitations of sausage skins are artificial sausage skins which can be made either from synthetic substances or from natural materials such as collagen. Collagen for sausage skins usually is obtained from a middle layer of the animal skin called corium. Therefore, the contested sausage skins and imitations thereof and the opponent’s animal skins can coincide in nature. Furthermore, they can coincide in distribution channels and in the relevant public. Therefore, they are similar to a low degree.
The opponent’s goods made of leather and not included in other classes and the contested boxes made of leather; boxes of leather or leather board; industrial packaging containers of leather have the same nature as they are made from the same material, namely leather. Their purpose, in the broadest sense, may also be the same in that they are for carrying or storing something. To that extent, the goods are similar to a low degree. However, in the absence of an express limitation by the opponent to clarify the scope of its goods, it cannot be assumed that they coincide in other criteria. Therefore, the contested boxes made of leather; boxes of leather or leather board; industrial packaging containers of leather and the opponent’s goods made of leather and not included in other classes are similar to a low degree.
The opponent’s goods made of leather and not included in other classes and the contested casings, of leather, for springs; chin straps, of leather; girths of leather; leather laces; leather straps; leather thread; studs of leather; trimmings of leather for furniture; valves of leather are made of leather and the contested shoulder belts; shoulder straps; straps for skates; straps for soldiers' equipment can be made of leather, therefore they have or may have the same nature as far as concerns their composition. Their purpose, in the broadest sense, may also be the same in that they are for fastening things, for holding things together or for holding things in place. To that extent, the goods are similar to a low degree. However, in the absence of an express limitation by the opponent to clarify the scope of its goods, it cannot be assumed that they coincide in other criteria. Therefore, the contested casings, of leather, for springs; chin straps, of leather; girths of leather; leather laces; leather straps; leather thread; shoulder belts; shoulder straps; straps for skates; straps for soldiers' equipment; studs of leather; trimmings of leather for furniture; valves of leather and the opponent’s goods made of leather and not included in other classes are similar to a low degree.
The opponent’s goods made of leather and not included in other classes and the contested rawhide chews for dogs have the same nature. Rawhide chews for dogs are made from an inner layer of cow or horse hides (the latter being ‘the skin of an animal, especially when tanned or dressed’; information extracted from Oxford English Dictionary on 10/08/2017 at https://en.oxforddictionaries.com/definition/us/hide). Their purpose, in the broadest sense, may also be the same in that they are for satisfying dogs’ need to chew something as it could be the case of leather toys for dogs. To that extent, the goods are similar to a low degree. However, in the absence of an express limitation by the opponent to clarify the scope of its goods, it cannot be assumed that they coincide in other criteria. Therefore, the contested rawhide chews for dogs and the opponent’s goods made of leather and not included in other classes are similar to a low degree.
The opponent’s goods made of imitations of leather and not included in other classes and the contested straps made of imitation leather have the same nature as they are made from imitation leather. Their purpose, in the broadest sense, may also be the same in that they are used to fasten, secure or to carry something or hold onto something. To that extent, the goods are similar to a low degree. However, in the absence of an express limitation by the opponent to clarify the scope of its goods, it cannot be assumed that they coincide in other criteria. Therefore, the contested straps made of imitation leather and the opponent’s goods made of imitations of leather and not included in other classes are similar to a low degree.
Contested goods in Class 25
Clothing; footwear; headgear are identically contained in both lists of goods.
The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.
- 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 or similar are directed at both the public at large and at business customers.
The degree of attention is considered to be average.
- The signs
Earlier trade mark | 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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, it is not excluded that part of the Italian-speaking public will associate the verbal element of the earlier trade mark ‘Brioni’ with a group of small islands in the Croatian part of the northern Adriatic Sea, which are part of Croatian National Park (in Croatian ‘Brijuni’). The Croatian- and Slovenian-speaking part of the relevant public may also associate the verbal element ‘Brioni’ with the name of this group of islands in Italian language. The Italian-speaking public may also perceive the verbal element ‘Brioni’ as a surname. However, for the other part of the relevant public, such as the German-, Czech-, Lithuanian-, Finish-, Polish-, Swedish-speaking part of the relevant public the verbal element ‘Brioni’ is meaningless and it is not likely that this part of the public will associate it with the name of the aforementioned islands in Italian language. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-, Czech-, Lithuanian-, Finish-, Polish-, Swedish-speaking part of the public.
The earlier trade mark is a figurative mark consisting of the verbal element ‘Brioni’ depicted in black letters in a stylised font. It has no meaning for the relevant public and its distinctiveness is considered average.
The contested sign is a figurative mark consisting of verbal element ‘Brinny’. It is depicted in black letters in a stylised font. The last letter ‘y’ and the first letter ‘B’ are joined by a line at the bottom of the sign. The verbal element of the contested sign has no meaning for the relevant public and its distinctiveness is considered average.
The earlier trade mark and the contested sign have no elements that could be considered more distinctive or dominant elements.
Visually, the signs coincide in the first three letters ‘Bri-’ and in the fifth letter ‘n’. However, they differ in the fourth and in the last letters, namely, ‘o’ and ‘i’ in the earlier trade mark and ‘n’ and ‘y’ in the contested sign. Therefore, the signs coincide in four out of six letters. Their first half, that is the beginning, consists of the same letters in an identical sequence. 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 (the initial part) the one that first catches the attention of the reader.
Although both signs are depicted in a stylised font and the first and the last letters of the contested sign are joined together, the difference in the overall stylisation of the signs is not so striking as to have a lasting impact and divert the attention from the verbal elements themselves.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the identical sound of the letters ‘BRI’ and identical or highly similar sound of the letter sequence ‘NI/‘NY’ (‘i’ and ‘y’ would be pronounced either identically or highly similarly) and differ in the sound of the letter ‘O’ in the earlier trade mark. The double ‘n’ would not be pronounced differently than the single one.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 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.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
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.
- Global assessment, other arguments and conclusion
In the present case the goods are identical or similar to different degrees. They target the general public and business customers. The degree of attention is average.
The signs are considered visually similar to an average degree and aurally similar to a high degree.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
In the present case the verbal elements of the signs coincide in four out of six letters. Furthermore, the first three letters are identical in both signs. As stated in section c) of this decision, the different stylisation of the signs is not so striking and would not counteract the similarity in the length of the signs, the coinciding beginning of the signs and overall similarity in the majority of the letters.
Taking into account the well-established principle that consumers must often trust in their imperfect recollection of trade mark, the differences identified between the signs are not sufficient to counteract the overall similarity between them and the possibility that even business customers might confuse the signs. As a consequence, there is a likelihood of confusion between the signs for the goods found to be identical or similar.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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).
As regards the goods that have been found similar to a low degree, it is considered that the high aural similarity and average visual similarity between the signs is sufficient to offset the low degree of similarity between those goods, and a likelihood of confusion exists also in relation to those goods.
Considering all the above, there is a likelihood of confusion on the part of the German-, Czech-, Lithuanian-, Finish-, Polish-, Swedish- speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 96 511. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier European Union trade mark registration No 96 511 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Martin EBERL | Biruté SATAITE-GONZALEZ | Vita VORONECKAITE |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.