CARMENTABERNER | Decision 2692708
Date Published: Sep 28, 2017
OPPOSITION No B 2 692 708
Calzaturificio Carmens S.P.A., Viale delle Terme, 15, 35030 Galzignano Terme (Padova), Italy (opponent), represented by Cantaluppi & Partners S.R.L., Piazzetta Cappellato Pedrocchi, 18, 35122 Padova, Italy (professional representative)
a g a i n s t
Creaciones Taberner S.L., Avda. de las Torres 29, 9ºb, 50008 Zaragoza, España (applicant), represented by Peleato Patentes Y Marcas S.L., Plaza del Pilar 12, 1º, 1ª, 50003 Zaragoza, España (professional representative).
On 08/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 692 708 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 859 177 namely against some of the goods and services in Classes 25 and 35. The opposition is based, inter alia, on Italian trade mark registration No 1 376 308 and on international trade mark registration No 1 053 771 designating the Czech Republic, Ireland, Slovakia, Poland, Croatia, Greece, Finland, France and Slovenia. 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 goods and services
The goods on which the opposition is based are the following:
Class 25: Footwear.
The contested goods and services are the following:
Class 25: Footwear.
Class 35: Wholesaling, retailing in shops and retailing via global computer networks of footwear.
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 assumed to be identical are directed at the public at large. The degree of attention is considered to be average.
- The signs
CARMENS | |
Earlier trade marks | Contested sign |
The relevant territories are Italy, the Czech Republic, Ireland, Slovakia, Poland, Croatia, Greece, Finland, France and Slovenia.
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 both consist of the word ‘CARMENS’. In the case of word mark, it is the word as such that is protected and not its written form.
The contested sign is a figurative mark that consists of the words ‘Carmen Taberner’, capitalized and written in a stylized light grey letter case. Though there is a certain distance between the two words, they are linked by the right stroke of the letter ‘n’ of the word ‘Carmen’. Underneath these words, on the right hand side, some stitches are depicted as if they belong to a piece of knitted fabric.
The verbal element ‘CARMENS’ in the earlier marks will be associated with the female first name of Spanish origin to which it is very similar, i.e. Carmen, which constitute the first verbal element of the contested sign. It is a first name that may belong to a great number of people who do not have anything in common. That is the reason why the degree of distinctiveness of this element is lower than the other word in the contested sign, which will be recognized as a surname, and, as such, has a higher intrinsic value.
The marks have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually and aurally, the signs coincide in the word ‘CARMEN’, however they differ in the additional letter ‘S’ at the end of the earlier marks and in the additional word ‘Taberner’ in the contested sign. Visually, they also differ in the representation of the stitches and in the stylization used in the contested sign.
Account should be taken that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Aurally, irrespective of the different pronunciations, the presence of an additional word of a considerable length creates quite a significant difference between the signs.
Therefore, despite the existing coincidence, the above mentioned differentiating elements are sufficient to consider the signs visually and aurally similar only to a low degree.
Conceptually, the word ‘CARMEN’, is a very well-known female Spanish first name and will be perceived as such by the public. The terms ‘Carmen Taberner’, owing to its construction, will be perceived as a combination of a forename and surname. Surnames have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because general experience tells that the same first name may belong to a great number of people who do not have anything in common, whereas the presence of the same surname could imply the existence of some link between those people (a family link). Therefore, consumers tend to pay more attention to family names than to first names. Furthermore, the Opposition Division is of the opinion that the first name ‘CARMEN’ is one of the most famous Spanish forenames not only Spain but also abroad in general. Therefore, the signs are conceptually lowly similar.
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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison “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).
Even assuming that the contested goods and services are identical to the opponent’s goods, the signs are visually, aurally and conceptually similar only to a low degree. This is because the additional elements in the contested sign are clearly perceivable, and in overall terms sufficient to exclude any likelihood of confusion between the marks. As thoroughly explained in part c) of the decision, the public will immediately recognize the word ‘Taberner’ as being a surname and give it a much higher intrinsic value than the coinciding word ‘Carmen’ which is one of the most common Spanish first names. Therefore, consumers will not focus as much on the first name, but on the surname instead. This difference is increasing the conceptual gap between the signs and considerably contributes to help consumers to differentiate them.
Therefore, it is not likely that consumers, even with an average degree of attention, would be misled as regards the commercial origin of the identical goods and services in question merely because of the coincidence in a first name.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
The opponent has also based its opposition on the following earlier trade mark:
Italian trade mark application No 30201500008440 for the word mark ‘CARMENS’.
Since this mark is identical to the ones which have been compared and since the contested goods and services have already been assumed to be identical, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Benoit VLEMINCQ | Sandra IBAÑEZ | Frédérique SULPICE |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.