ESPRITDSENS | Decision 2578360

Date Published: Sep 22, 2017

OPPOSITION No B 2 578 360

Esprit International, 1370 Broadway, New York, NY 10018, United States of America (opponent), represented by Osborne Clarke, Innere Kanalstr. 15, 50823 Köln, Germany (professional representative)

a g a i n s t

Innovation et Distribution de Marques, 3 rue Samaritaine, 01000 Bourg en Bresse, France, represented by Ixas Conseil 15, rue Emile Zola, 69002 Lyon, France (professional representative).

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 578 360 is upheld for all the contested goods.

2.        International registration No 1 227 431 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 227 431 for the figurative mark. The opposition is based on, inter alia, European trade mark registration No 151 019 for the word mark ‘ESPRIT’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use for all the earlier marks on which the opposition is based. The Opposition Division finds it appropriate to first examine the proof of use in relation to the opponent’s European trade mark registration No 151 019 for the word mark ‘ESPRIT’.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The relevant date (first republication of the contested international registration plus six months) is 19/06/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 19/06/2010 to 18/06/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Cosmetics and perfumery; soaps and toilet preparations; excluding coloring and self- tanning products.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 26/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/09/2017 to submit evidence of use of the earlier trade mark. This time limit was extended at the request of the opponent until 26/11/2016. On 24/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following (indexed in the following manner as in the opponent’s observations):

• Item 1: non-exhaustive list of perfumes sold since 2010 mentioning the mark ‘ESPRIT’. The list is not dated.
• Item 2: 14 invoices relating to sales in Germany for the perfume ‘ESPRIT`(20 pages).
• Item 3: 11 printed advertisements in German magazines dated from 2012 to 2015 (25 pages).
• Item 4: 12 clippings relating to perfumes with the trade mark ‘ESPRIT’ in German magazines (12 pages).
• Item 5: 13 invoices relating to sales in France referring to the mark `ESPRIT`and dated during the relevant period (20 pages).
• Item 6: 9 invoices relating to sales in Benelux referring to the mark `ESPRIT`and dated during the relevant period (19 pages).

All the documents show that the place of use is Germany, France and the Benelux countries. This can be inferred from the language of the documents and the addresses. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. Item 1 is not dated. Nevertheless, this item is illustrative of the goods that have been invoiced, for instance in items 2, 5 and 6.

All the documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods:

Class 3: perfumery.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 trade mark registration No 151 019.

1. The goods

The goods on which the opposition is based are the following:

Class 3: Perfumery.

The contested goods are the following:

Class 3: Perfumery products; perfumes; toilet water; cosmetic products; make-up products; essential oils; soaps.

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.

The contested perfumes; perfumery products are identically contained in both lists of goods (including synonyms).

The contested toilet water is included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested cosmetic products; make-up products; essential oils are similar to a high degree to the opponent’s perfumery. They have the same purpose and can even have the same nature. They can coincide in producer, end user and distribution channels.

The contested soaps are similar to the opponent’s perfumery, as they can coincide in producer, end user and distribution channels.

2. 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 various degrees) are directed at the public at large. The degree of attention is considered to be average.

3. The signs

ESPRIT
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘ESPRIT’ is meaningful in certain territories, for example, in those countries where French is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The word ‘ESPRIT’ contained in both marks is a French word which means spirit, liveliness or wit. Even though it has a meaning for the French-speaking public, it is normally distinctive in relation to the goods in Class 3. Even though the contested sign is composed of more letters, the element ‘ESPRIT’ can be clearly separated from the remaining part, due to its slightly different black colour and followed by a white letter outlined in black.

The element ’DSENS, separated from the element ‘ESPRIT’, as explained above, is composed of the letter ’D’ and the French element ’SENS’, which means, sense/orientation.  In fact, the letter D’, which appears in the contested sign with a different background could be understood as a shortcut of the preposition ’de’ which means ’of’ in French. In this sense, the contested mark as a whole will be perceived as ’the spirit of sense’ in French. These elements do not have any meaning in relation to the goods in Class 3 and, therefore, this part is distinctive as well.

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.

Visually, the signs are similar to the extent that they coincide in the element ‘ESPRIT’. On the other hand, they differ in the additional letter and word ‘DSENS’ of the contested mark and its graphical representation (the bold back letters separated by the letter ’D’ in white and outlined in black). The marks are visually similar to an average degree.

Aurally, the pronunciation of the marks coincides in the sound of the letters ‛ESPRIT’, present identically in both signs, and to that extent the marks are aurally similar to an average degree. The pronunciation differs in the sound of the letters ‛DSENS’ of the contested mark which have no respective counterpart in the earlier mark.

Conceptually, reference is made to the meanings explained above. Since the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree for the French-speaking 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.

4. 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.

5. Global assessment, other arguments and conclusion

The above comparison has established that the goods in dispute are identical and similar (to various degrees). Regarding the signs, visual, phonetic and conceptual similarities have been found to an average degree. The consumer is the public at large with an average level of attention.

The opponent’s mark ’ESPRIT’ is entirely reproduced at the beginning of the contested mark which is the part where the consumers generally tend to focus on when confronted with a trade mark. Consequently, the coinciding first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks. The fact that the contested mark includes the additional letter and word element ’DSENS’ does not alter the perception of the word element ’ESPRIT’, as the elements are clearly separated. The word ’ESPRIT’ plays an independent and distinctive role in both the earlier mark and the contested mark.

The Opposition Division considers that the similarity between the signs resulting from the earlier mark being completely reproduced in the contested mark, combined with the identity and similarity of the goods at issue, is such that the contested application may create an association with the earlier mark ’ESPRIT’ in the mind of the relevant public, the result of which is that the contested sign, composed also of the same word element ’ESPRIT’ in combination with the element ’DSENS’, will be perceived as a variant of the earlier mark.

Considering all the above, 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 trade mark registration No 151 019. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 mark due to its extensive reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European trade mark registration No 151 019 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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(5) EUTMR.

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 holder 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

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

Saida CRABBE

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.