ELLEELLE LL | Decision 2709858
Date Published: Sep 28, 2017
OPPOSITION No B 2 709 858
Hachette Filipacchi Presse (Société Anonyme), 149, rue Anatole France, 92534 Levallois Perret Cedex, France (opponent), represented by Ipso, 5, rue Murillo, 75008 Paris, France (professional representative)
a g a i n s t
L BY L, Piazza Gramsci, 16, 50053 Empoli, Italy (applicant), represented by Leonardo Marconi, Viale Giuseppe Mazzini, 45, 50132 Firenze, Italy (professional representative).
On 03/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 709 858 is upheld for all the contested goods.
2. European Union trade mark application No 15 146 723 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 15 146 723. The opposition is based on European Union trade marks No 3 566 734, No 5 621 073 and No 3 475 365. The opponent invoked Article 8(1)(b) EUTMR in relation to European Union trade marks No 3 566 734 and No 5 621 073, and Article 8(5) EUTMR in relation to European Union trade mark No 3 475 365.
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 marks No 3 566 734 and No 5 621 073.
- The goods
The goods on which the opposition is based are the following:
(1) European Union trade mark No 3 566 734 (earlier mark 1)
Class 18: Leather goods and luggage of all kinds, including bags, purses, wallets, hand bags, travel bags, trunks and valises, umbrellas, leather and imitations of leather and items of these materials in general not included in other classes; animal skins and hides, whips, harness and saddlery.
Class 25: Clothing in general, in particular shorts, pants, jumpsuits, shirts, tee-shirt, pullovers, sweaters, overcoats, skirts, dresses, sports clothing, belts, footwear.
(2) European Union trade mark No 5 621 073 (earlier mark 2)
Class 14: Horological and chronometric instruments, in particular watches and accessories therefor and clocks of all kinds, alarm clocks, bracelets, and jewellery and precious stones in general; precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, namely silver plate (plates, dishes), services (tableware) of precious metal, jewellery cases of precious metal.
The contested goods are the following:
Class 14: Gemstones, pearls and precious metals, and imitations thereof; jewellery; time instruments; jewellery boxes and watch boxes; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; split rings of precious metal for keys; decorative articles [trinkets or jewellery] for personal use; identification bracelets [jewelry]; trinkets of bronze; charms of precious metals; charms of semi-precious metals; key charms coated with precious metals; trinkets coated with precious metal; commemorative statuary cups made of precious metal; prize cups of precious metals; copper tokens; metal tokens used for mass transit; silver alloys; iridium alloys; osmium alloys; palladium alloys; rhodium alloys; ruthenium alloys; coins; commemorative coins; gold bullion coins; collectible coins; key rings and key chains; paste jewellery [costume jewelry (am.)]; imitation jewellery ornaments; jewellery, including imitation jewellery and plastic jewellery; beads for making jewelry; semi-precious articles of bijouterie; threads of precious metal [jewellery, jewelry (Am.)].
Class 18: Saddlery, whips and animal apparel; sausage skins and imitations thereof; umbrellas and parasols; luggage, bags, wallets and other carriers; shoulder belts [straps] of leather; studs of leather; straps for soldiers’ equipment; kid; leatherboard; girths of leather; straps made of imitation leather; shoulder straps; leather laces; leather straps; straps for skates; leather, unworked or semi-worked; leather for harnesses; leather for shoes; leather thread; moleskin [imitation of leather]; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; casings, of leather, for springs; trimmings of leather for furniture; harness fittings; imitation leather; chin straps, of leather; rawhide chews for dogs; worked or semi-worked hides and other leather.
Class 25: Clothing; Headgear; Hats; Footwear.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods of Class 14 and 25, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the opponent’s list of goods of Class 14 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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
Precious metals and jewellery are identically contained in the lists of goods of the contested sign and earlier mark 2.
The contested and imitations thereof (precious metals -) are included in or overlap with the broad category of the opponent’s precious metals and their alloys (earlier mark 2). Therefore, they are identical.
The contested gemstones, pearls, and imitations thereof are included in the broad category of the opponent’s precious stones in general (earlier mark 2). Therefore, they are identical.
The contested time instruments are included in the broad category of the opponent’s horological and chronometric instruments (earlier mark 2). Therefore, they are identical.
The contested decorative articles [trinkets or jewellery] for personal use; identification bracelets [jewelry]; trinkets of bronze; charms of precious metals; charms of semi-precious metals; key charms coated with precious metals; trinkets coated with precious metal; split rings of precious metal for keys; key rings and key chains; paste jewellery [costume jewelry (am.)]; imitation jewellery ornaments; jewellery, including imitation jewellery and plastic jewellery; beads for making jewelry; semi-precious articles of bijouterie; threads of precious metal [jewellery, jewelry (Am.)] are included in the broad category of the opponent’s jewellery (earlier mark 2). Therefore, they are identical.
The contested silver alloys; iridium alloys; osmium alloys; palladium alloys; rhodium alloys; ruthenium alloys are included in the broad category of the opponent’s precious metals and their alloys (earlier mark 2). Therefore, they are identical.
The contested jewellery boxes overlap with the opponent’s jewellery cases of precious metal (earlier mark 2). Therefore, they are identical.
The contested watch boxes are similar to the opponent’s watches and accessories therefor (earlier mark 2), since they can have the same producer, relevant consumers and distribution channels. Moreover, they are complementary.
The contested copper tokens; metal tokens used for mass transit; coins; commemorative coins; gold bullion coins; collectible coins are small round pieces of precious metals or their alloys and can be used as or instead of money (tokens) or intended for coin collectors or investors in precious metals. They are considered similar to the opponent’s jewellery (earlier mark 2) to the extent that they have the same distribution channels (e.g. jewellery shops) and can have the same producers and relevant public, namely purchasers of valuables.
The contested commemorative statuary cups made of precious metal; prize cups of precious metals are trophies in the form of cups made of precious metals. They are considered similar to the opponent’s silver plate (plates, dishes) (earlier mark 2), which may also include items of antiquarian collections, decorative items or gifts. Therefore, they can have the same producer, distribution channels and relevant consumers.
The contested ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof all are goods made of or coated with precious or semi-precious metals or stones, and are considered similar to a low degree to the opponent’s precious metals and precious stones in general (earlier mark 2), which are the basic components (materials) of these contested goods and decisive for their character, quality and value. They can have the same producer, be distributed through the same distribution channels and target the same consumers.
Contested goods in Class 18
Saddlery; whips; umbrellas; leather, unworked or semi-worked; imitation leather; worked or semi-worked hides are identically contained in the lists of goods of the contested sign and earlier mark 1 (including synonyms).
The contested studs of leather; kid; leatherboard; girths of leather; leather laces; leather straps; straps made of imitation leather; straps for skates; leather for harnesses; leather for shoes; leather thread; moleskin [imitation of leather]; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; casings, of leather, for springs; trimmings of leather for furniture; harness fittings; chin straps, of leather; rawhide chews for dogs; animal apparel and other leather are included in the broad category of the opponent’s leather and imitations of leather and items of these materials in general not included in other classes (earlier mark 1). Therefore, they are identical.
The contested luggage, bags, wallets and other carriers; shoulder belts [straps] of leather; straps for soldiers’ equipment; shoulder straps are included in the broad category of the opponent’s leather goods and luggage of all kinds (earlier mark 1). Therefore, they are identical.
The contested parasols are light umbrellas carried as protection from the sun. They have the same purpose and nature as the opponent’s umbrellas (earlier mark 1), and can have the same producer, relevant consumers and distribution channels. Therefore, they are similar.
The contested sausage skins and imitations thereof and the opponent’s animal skins (earlier mark 1) both can serve as raw materials for making leather and leather goods. They can have the same producer, be distributed through the same distribution channels and target the same consumers. Therefore, they are considered similar to a low degree.
Contested goods in Class 25
Clothing, footwear are identically contained in the lists of goods of the contested sign and earlier mark 1 (including synonyms).
The contested headgear, hats are similar to the opponent’s clothing (earlier mark 1), because they have similar natures and serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected.
- 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 (to different degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise in the relevant field. The degree of attention will be higher in relation to the goods in Class 14, which are expensive luxury goods and will be selected carefully by the relevant consumers. In relation to the remaining goods, the degree of attention will be average.
- The signs
Earlier mark 1 Earlier mark 2 (earlier mark 1 and earlier mark 2 are collectively referred to as the earlier marks) | |
Earlier trade marks | 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, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.
The earlier marks are figurative marks consisting of the word ‘ELLE’ written in slightly stylised black upper case letters.
The contested sign is a figurative mark consisting of two words ‘ELLE’, depicted in stylised black upper case letters, the second of which is a mirror image of the first one. The words ‘ELLE ELLE’ are framed by a simple geometric shape that can be perceived as a square with missing segments in the top right and bottom left corners.
The French-speaking consumers in the European Union will understand the word ‘ELLE’ in the earlier marks and in the contested sign (where it appears twice) as meaning ‘she’. Even though it is not excluded that the word ‘ELLE’ can be perceived by part of the relevant public as suggesting that the goods are intended for women, it does not directly describe any particular characteristics of the goods in question. Therefore, the distinctiveness of the word ‘ELLE’ in the earlier marks and the contested sign (where it appears twice) is considered average. The figurative element of the contested sign that frames the word elements is of purely decorative nature. Therefore, it is considered that ‘ELLE ELLE’ is the most distinctive element of the contested sign.
Neither the earlier marks nor the contested sign have any element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the earlier marks and the contested sign are similar to the extent that they coincide in the sequence of letters ‘ELLE’, which constitutes the earlier marks in their entirety and appears twice in the contested sign. The signs differ in that the second ‘ELLE’ in the contested sign is reversed, in their overall stylisation and in the decorative figurative element of the contested sign.
Although the repetition of the word ‘ELLE’ in a mirror image makes the contested sign twice as long and creates some visual differences from the earlier marks, the fact that the second ‘ELLE’ is not a different word but only a reflection of the first ‘ELLE’ will not go unnoticed by the relevant consumers. Moreover, since the first ‘ELLE’ fully coincides with the earlier marks and bearing in mind that consumers generally tend to focus on the beginning of a sign, the difference in the additional identical word (even in a mirror image) will be paid less attention by the relevant consumers. The stylisation of the contested sign and the additional decorative figurative element will not have much influence on the consumers’ perception, since their attention will focus on the distinctive element ‘ELLE ELLE’.
Therefore, the earlier marks and the contested sign are considered visually similar to at least an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ELLE’. The pronunciation differs only in the fact that the word ‘ELLE’ can be pronounced twice in the contested sign. However, since it is the same word, this repetition will not create any different sounds or any significant differences between two marks from the aural point of view. Therefore, the signs are considered aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the earlier marks and the contested sign will be perceived in the same way and the repetition of the same word in the contested sign will not result in any additional concept, the signs are considered conceptually highly similar, if not identical.
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 marks
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 earlier marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no particular meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, despite some possible allusiveness, as mentioned above in section c) of this decision, the distinctiveness of the earlier marks must be seen as normal.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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 concluded above, the contested goods are partly identical and partly similar (to different degrees) to the opponent’s goods and they target both the public at large and business consumers, whose degree of attention will vary from average to higher than average.
The distinctiveness of the earlier marks is average.
The signs are visually similar to at least an average degree, aurally highly similar and conceptually highly similar if not identical on account of ‘ELLE’, which is the only element of the earlier marks and the distinctive element of the contested sign. The differences between the earlier marks and the contested sign arise from the repetition of ‘ELLE’ (in a mirror image) and the decorative element of the contested sign. However, even taking into account that for the relevant goods (in Classes 14, 18 and 25) the visual aspect plays a greater role (since the majority of the goods in question will be examined visually prior to their purchase), these differences are not able to counteract the similarities and to prevent the likelihood of association between the contested sign and the earlier marks.
Therefore, and applying the abovementioned principle of interdependence, the relevant public is likely to perceive the contested sign as a variant of the earlier marks and believe that the goods in question (even those that are similar to a low degree) come from the same undertaking or, as the case may be, from economically linked undertakings.
Considering all the above and taking into account 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), the Opposition Division finds that there is a likelihood of confusion on the part of the French-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 registrations No 3 566 734 and No 5 621 073. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(5) EUTMR in relation to European Union trade mark registration No 3 475 365.
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
Anunciata SEVA MICO | Rasa BARAKAUSKIENE | Plamen IVANOV |
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.