DIRCE REPOSSI | Decision 2787714
Date Published: Sep 24, 2017
OPPOSITION No B 2 787 714
Société Civile G.A.R., Park Palace, Bloc B, 5, Impasse de la Fontaine, 98000 Monaco, Monaco (opponent), represented by Ipsilon, Europarc - Bâtiment B7, 3 rue Edouard Nignon, 44300 Nantes, France (professional representative)
a g a i n s t
Dirce Repossi Limited, 207A, Harbour Ctr Tower 2, 8 Hok Cheung St, Hung Hom, Special Administrative Region of Hong Kong of the People's Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).
On 30/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 787 714 is partially upheld, namely for the following contested goods and services:
Class 14: Bracelets; Brooches [jewellery]; Chronometric instruments; Earrings; Horological instruments; Imitation jewellery; Jewellery; Jewellery chain; Jewellery watches; Necklaces; Pendants; Pins [jewellery]; Presentation boxes for Jewellery; Presentation boxes for watches; Ornamental pins; Ornaments [jewellery]; Rings [jewellery]; Trinkets [jewellery]; Watch bracelets; Watch chains; Watch straps; Watches.
Class 18: Backpacks; Bags; Bags made of imitation leather; Bags made of leather; Briefcases; Casual bags; Handbags; Handbags made of imitations leather; Handbags made of leather; Shopping bags; Sports bags; Trunks [luggage]; Wallets.
Class 35: Retail services in relation to jewellery; Retail services in relation to time instruments; Wholesale services in relation to jewellery; Wholesale services in relation to time instruments.
2. European Union trade mark application No 15 570 195 is rejected for all the above goods and services. It may proceed for the remaining 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 15 570 195 for the figurative mark . The opposition is based on, inter alia, international trade mark registration No 1 215 891 of the word mark ‘REPOSSI’, designating the European Union. 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 international trade mark registration No 1 215 891 designating the European Union.
- The goods and services
The goods on which the opposition is based are the following:
Class 03: Bleaching preparations and other substances for laundry use, cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 14: Precious metals and their alloys and goods made of these materials or coated therewith not included in other classes; jewelry, precious stones; timepieces and chronometric instruments.
Class 18: Leather and imitation leather, goods made of these materials not included in other classes; animal skins; trunks and suitcases; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
The contested goods and services are the following:
Class 14: Bracelets; Brooches [jewellery]; Chronometric instruments; Earrings; Horological instruments; Imitation jewellery; Jewellery; Jewellery chain; Jewellery watches; Necklaces; Pendants; Pins [jewellery]; Presentation boxes for Jewellery; Presentation boxes for watches; Ornamental pins; Ornaments [jewellery]; Rings [jewellery]; Trinkets [jewellery]; Watch bracelets; Watch chains; Watch straps; Watches.
Class 18: Backpacks; Bags; Bags made of imitation leather; Bags made of leather; Briefcases; Casual bags; Handbags; Handbags made of imitations leather; Handbags made of leather; Shopping bags; Sports bags; Trunks [luggage]; Wallets.
Class 35: Administration of the business affairs of franchises; Advertising and publicity; Cost price analysis; Demonstration of goods; Import and export services; Marketing; On-line advertising on computer networks; Price comparison services; Provision of an on-line marketplace for buyers and sellers of goods and services; Retail services in relation to bags; Retail services in relation to jewellery; Retail services in relation to time instruments; Wholesale services in relation to bags; Wholesale services in relation to jewellery; Wholesale services in relation to time instruments.
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
Jewellery; chronometric instruments are identically contained in both lists of goods.
The contested bracelets; brooches [jewellery]; earrings; imitation jewellery; jewellery chain; jewellery watches; necklaces; pendants; pins [jewellery]; ornamental pins; ornaments [jewellery]; rings [jewellery]; trinkets [jewellery] are included the broad category of the opponent’s jewelry. Therefore, they are identical.
The contested watches; horological instruments are included in the broad category of the opponent’s time pieces and chronometric instruments. Therefore they are identical.
The contested watch bracelets; watch chains; watch straps are similar to the opponent’s time pieces. These goods are complementary and target the same consumer. They share distribution channels and are generally produced by the same company.
The contested presentation boxes for jewellery are similar to the opponent’s jewelry. These goods are complementary and target the same consumer. They share distribution channels and may be produced by the same company.
The contested presentation boxes for watches are similar to the opponent’s time pieces. These goods target the same consumer. They share distribution channels and may be produced by the same company.
The contested goods in Class 18
Trunks are identically contained in both lists of goods.
The contested backpacks; bags; bags made of imitation leather; bags made of leather; briefcases; casual bags; handbags; handbags made of imitations leather; handbags made of leather are similar to the opponent’s trunks and suitcases. The purpose of these goods is the same, that is, to carry items. In addition the distribution channels and relevant public may coincide.
The contested wallets are similar to the opponent’s clothing in Class 25. These goods may share distribution channels, relevant public and producers.
According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), goods made of leather and imitations of leather does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors.
The opponent’s goods goods made of leather and imitation leather not included in other classes and the contested goods shopping bags; sports bags may coincide in their nature. Their purpose, in the broadest sense, may also be the same in that they may be for carrying items. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.
Contested services in Class 35
Retail (and wholesale) services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retail and wholesale services in relation to jewellery and time instruments are similar to a low degree to the opponent’s jewelry and timepieces in Class 14.
However, this does not apply in relation the contested retail services in relation to bags; wholesale services in relation to bags. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar.
Finally, the contested administration of the business affairs of franchises; advertising and publicity; cost price analysis; demonstration of goods; import and export services; marketing; on-line advertising on computer networks; price comparison services; provision of an on-line marketplace for buyers and sellers of goods and services are all advertising, import and export and/or business administration services. They are all dissimilar to all of the opponent’s goods. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.
In particular and contrary to the opponent’s view, there is no common point between the contested advertising services and the opponent’s goods. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.
Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.
- 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 to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise.
The degree of attention is considered to vary from average to high. At least for jewellery the level of attention, depending on the price, may be high. In its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.
- The signs
REPOSSI | |
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).
Both ‘DIRCE’ and ‘REPOSSI’ are names in some parts of the European Union such as in Italy. However they are rare names and will not be recognised as such by the vast majority of Europeans. Therefore the Opposition Division considers it appropriate to proceed on the basis of those that do not recognise the verbal elements as names.
The earlier mark is the word mark ‘REPOSSI’ which has no meaning in relation to the goods in question. Therefore it is distinctive.
The contested sign is a figurative mark made up of the verbal elements ‘DIRCE’ and ‘REPOSSI’ neither of which has any meaning in relation to the goods and services in question. Therefore they are distinctive. ‘DIRCE’ appears in a standard black capital letters, above ‘REPOSSI’ and in a larger typeface. Above the verbal elements is a figurative element made up of thick and fine curved and fine straight lines. The figurative element has no meaning in relation to the goods and services in question and so is distinctive. No one element is more dominant than the others.
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).
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.
Visually, the signs coincide in seven letters ‘REPOSSI’ which is the earlier sign in its entirety. They differ in the first five-letter verbal element ‘DIRCE’ and in the figurative element of the contested sign that have no counterparts in the earlier mark. Therefore, the signs are similar to below average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in pronunciation of the three syllables ‛RE-PO-SSI’, present identically in both signs. The pronunciation differs in the pronunciation of two syllables ‛DIR-CE’, the first verbal element of the contested mark, which has no counterpart in the earlier sign. Therefore, the signs are similar to an above 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 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.
- Global assessment, other arguments and conclusion
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.
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
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). 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).
In the present case the goods and services have been found to be partly identical, partly similar to varying degrees and partly dissimilar. The marks are aurally similar to an above average degree and visually similar to a below average degree, the conceptual aspect not having any impact. The level of attention of the relevant consumers varies from average to high and the earlier mark has a normal degree of distinctive character.
The earlier mark is contained in its entirety in the contested sign as a distinctive and independent verbal element that is clearly perceivable by the relevant consumer, albeit somewhat smaller than the other verbal element. The differences between the marks are not sufficient to outweigh the impact of this coinciding distinctive element. Therefore there is likelihood of confusion of the part of the relevant public even for those with a high degree of attention and for goods and services similar to a low degree.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that do not recognise the verbal elements as names and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration.
Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.
The rest of the contested services 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 services 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 marks due to their 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 marks 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:
International registration No 983 630 designating the European Union.
The other earlier right invoked by the opponent covers a narrower scope of the goods. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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 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
Konstantinos MITROU | Lynn BURTCHAELL | Denitza STOYANOVA-VALCHANOVA |
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.