CLARISS | Decision 2788159
Date Published: Sep 24, 2017
OPPOSITION No B 2 788 159
Clarisse, Inc., 311 Fawn Hill Lane, Narberth, Pennsylvania 19072, United States of America (opponent), represented by Cabinet Beaumont, 1, Rue Champollion, 38000 Grenoble, France (professional representative)
a g a i n s t
Emad Rifky Labib Gobryal, 13 El Hegaz St, Heliopolis, Cairo, Egypt (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).
On 22/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 788 159 is upheld for all the contested goods.
2. European Union trade mark application No 15 630 007 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 15 630 007. The opposition is based on European Union trade mark registration No 8 221 211. 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
The goods on which the opposition is based are the following:
Class 25: Clothing; footwear; headgear.
The contested goods are the following:
Class 25: Shirts; gloves [clothing]; swimsuits; underwear; layettes [clothing]; leather belts [clothing]; scarves; hosiery; hats; shoes; coats; trousers.
The contested shirts; gloves [clothing]; swimsuits; underwear; layettes [clothing]; leather belts [clothing]; scarves; hosiery; coats; trousers are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.
The contested shoes are included in the broad category of the opponent’s footwear. 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 are directed at the public at large. The degree of attention is considered average.
- The signs
CLARISSE | |
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 earlier mark is a word mark consisting of the word ‘CLARISSE’. In word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is depicted in upper or lower case letters or a combination thereof.
The contested sign is a figurative mark consisting of the strings of letters ‘CL’ and ‘RISS’ written in standard lower case, with the exception of the upper case letter ‘C’ at the beginning of the sign. Between these strings of letters is a figurative element composed of overlapping lines in two shades that could be perceived by a part of the public as a stylised incomplete star and by another part as an abstract composition of lines. Nevertheless, it cannot be excluded that a significant part of the public will perceive the mark as the word ‘CLARISS’ with a highly stylised letter ‘A’ in the middle. The Opposition Division will focus the comparison of the signs on this part of the public.
The earlier mark, ‘CLARISSE’, is a French and Dutch female name, which will be recognised by a significant part of the public in the relevant territory because there are similar equivalent names in other languages, for example ‘Clarissa’ or ‘Clarisa’ in Danish, English, German, Italian, Portuguese, Spanish and Swedish. The contested sign, ‘CLARISS’, will also be understood as a name, as it is a common diminutive or variant of ‘CLARISSE’ in several parts of the relevant territory (including the synonym ‘Claris’), and also because ‘CLARISSE’ and ‘CLARISS’ will be pronounced identically in some languages. For the rest of the relevant public, which will not associate these words with names, they are considered meaningless.
‘CLARISSE’ and ‘CLARISS’ have no meanings in relation to the relevant goods. Therefore, the signs are distinctive.
Visually, the marks are similar to the extent that they coincide in the letters ‘CLARISS*’, which form the whole contested sign and the beginning of the earlier mark. However, they differ in the additional letter ‘E’ at the end of the earlier mark and in the stylisation of the contested sign, in particular in the stylisation of the letter ‘A’, which is depicted as overlapping lines in two shades. Therefore, the signs are visually similar to a higher than average degree.
Aurally, the signs coincide in the pronunciation of the letters ‘CLARISS*’ but differ in the pronunciation of the additional letter ‘E’ in the earlier mark. However, for a part of the relevant public, such as French-speaking consumers, there are no differences in the pronunciation of the signs. Therefore, for a part of the public the signs are aurally highly similar and for a part of the public they are aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the same distinctive name, ‘Clarissa’ (including the diminutive or variation of that name, ‘Clariss’), the Opposition Division considers them conceptually highly similar for the part of the public that will recognise them as names.
On the other hand, neither of the signs has a meaning for a part of 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 for that part of the public.
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
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the goods are identical. The degree of attention of the relevant public is average. The signs are visually similar to a higher than average degree and aurally at least highly similar (if not identical). The conceptual aspect of the comparison of the signs does not influence the outcome of the assessment for the part of the public for which the signs are meaningless. However, for the remaining part of the public the signs are conceptually 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.
Considering the above and the fact that the differences between the signs are limited to the stylisation of the contested sign and additional letter ‘E’ at the end of the earlier mark, it is highly conceivable that the relevant consumer will perceive the goods at issue marked with the signs as coming from the same undertaking or from economically linked undertakings. This finding is also reinforced by the fact that the beginnings of the marks are the same, the pronunciation of the signs is identical or highly similar and the goods are identical.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 221 211. It follows that the contested trade mark must be rejected for all the contested goods.
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
Justyna GBYL | Begoña | Benoit VLEMINCQ |
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.