LE SAC 11 | Decision 2520917 - Felipe Domingo Asuncion v. GIORGIO ARMANI S.p.A., Milan, Swiss Branch Mendrisio
Date Published: Sep 22, 2017
OPPOSITION No B 2 520 917
Felipe Domingo Asunción, Calle Dr. Cortezo, 8, 28012 Madrid, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)
a g a i n s t
Giorgio Armani S.P.A., Via Borgonuovo, 11, 20121 Milano, Italy (applicant), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative).
On 20/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 520 917 is partially upheld, namely for the following contested goods:
Class 18: | Handbags; traveling bags; briefcases; leather briefcases; leather credit card holders; wallets; leather document briefcases; leather key cases; purses; suit cases; cosmetic bags sold empty; sports bags included in this class; bags for athletic equipment; evening and shoulder bags for ladies; leather shopping bags; school bags; garment bags for travel; suit carriers for travel; shoe bags for travel; beach bags; diaper bags; backpacks; Boston bags; traveling trunks; duffel bags; overnight bags; carry-on bags; satchels; opera bags; vanity cases (not fitted); cases and boxes made of leather; bags made of leather for packaging; leather straps. |
Class 25: | Coats; jackets; trousers; skirts; tops; raincoats; overcoats; belts; braces for clothing; suits; stuff jackets; jumpers; jeans; dresses; cloaks; parkas; shirts; T-shirts; sweaters; underwear; baby dolls being nightwear; bathrobes; bathing costumes; négligée; swimsuits; dressing gowns; shawls; scarves; ties; neckties; sweat shirts; under shirts; polo shirts; body suits; shorts; stockings; socks; shoes; slippers; overshoes; galoshes; wooden clog; boots; ski boots; half boots; esparto shoes or sandals; sandals; bath sandals; gloves; mittens; hats and caps; visors (headwear). |
2. European Union trade mark application No 13 612 593 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 612 593. The opposition is based on Spanish trade mark registrations No 919 900 (4), No 2 244 284 (7) and No 2 244 285 (5). The opponent invoked Article 8(1)(b) 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.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Spanish trade marks No 919 900 (4), ‘LESAC’, and No 2 244 284 (7) and No 2 244 285 (5), both for ‘’.
The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
The contested application was published on 03/02/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 03/02/2010 to 02/02/2015 inclusive.
Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:
Class 18: | Handbags, purses, suitcases and wallets made from leather. |
Class 25: | Ready-made clothing, footwear, headgear. |
Class 35: | Retail sales services. |
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 marks for the goods and services in respect of which they are registered and on which the opposition is based.
On 14/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 14/02/2016 to submit evidence of use of the earlier trade marks. This deadline was extended at the request of the opponent until 14/04/2016. On 06/04/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is, inter alia, the following:
- Item No 1: sworn statement issued and signed by Ms Pilar Martinez Carbonero, the only administrator of the company LESAC S.L. The breakdown of sales per year (2010 to 2014) and per broad product category is shown. Ms Martinez indicates that these sales correspond to the trade marks ‘LESAC’. The document was signed on 08/03/2015.
- Item No 2: invoices dated 2010, 2011, 2012, 2013 and 2014. In the invoices, the earlier trade marks do not appear in the details of the products sold; instead, the earlier marks are found in the header of the documents, namely in the company name LESAC S.L. Most of the invoices refer to the relevant goods (shoes, bags, handbags, purses, wallets, belts, scarves, and clothing such as shirts, dresses and skirts).
- Item No 4: printouts from the online shop on the opponent’s website www.lesac.es, dated March 2016. The earlier marks ‘LESAC’ are contained in the domain name (lesac.es).
The different sections of the online shop are demonstrated by the product categories, with different models and their prices also shown. The relevant products can be identified, namely handbags, purses and wallets, shoes and clothing. | |
In all cases, the earlier marks appear in the logo of the website and in some of the product labels, as follows: |
- Item No 5: pictures dated within the relevant period (2014) showing the figurative mark ‘Lesac’.
- Item No 6: three advertisements in magazines:
- Guia Metropoli, dated 2012, presenting a retail shop named ‘LESAC’ and indicating its address, opening hours, etc. Reference is also made to the goods that are sold (shoes, handbags and clothing). The article also indicates the existence of four additional shops.
- Woman, dated May 2015, presenting a pair of shoes bearing the trade mark .
- MarieClaire, dated May 2015, showing a pair of sandals bearing the trade mark ‘Le Sac’.
The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.
According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.
The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).
Consequently, it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent. To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.
As far as the sworn statement of item No 1 is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.
The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier marks are registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
Place of use
The invoices, online shop printouts and advertisements show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros), the addresses in Spain and the domain (.es) of the opponent’s website and online shop. Therefore, the evidence relates to the relevant territory.
Time of use
Most of the evidence is dated within the relevant period. The two advertisements from May 2015 fall outside it by only a few months.
Extent of use
Concerning the extent of the use made of the earlier marks, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, as well as the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).
That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).
Under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).
Moreover, it should be noted that use need not have been made throughout the period of five years; any time within the five years is sufficient, as the provisions on use do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52).
The documents filed, namely the invoices, the online shop printouts and the sworn statement, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices submitted were issued between 2010 and 2014. The amounts referred to in the sworn statement and in the invoices for the goods and services in question provide sufficient information regarding the commercial volume of use and demonstrate that the use of the sign in Spain has been more than mere token use. Therefore, these documents prove the duration and frequency of use of the marks.
Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.
Nature of use
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
The proof of use must establish a clear link between the use of the mark and the relevant goods or services. As indicated in Rule 22(4) EUTMIR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T-105/13, TrinkFix, EU:T:2014:1070, § 28-38). A depiction of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.
In the present case, the invoices include the company name LESAC S.L., and one of them, dated 21/11/2014, shows the earlier marks ‘LESAC’ in direct relation to the goods.
The applicant argues that earlier marks No 919 900 (4), ‘LESAC’, and No 2 244 284 (7) and No 2 244 285 (5), , for goods in Classes 25 and 35 have not been used and that the word ‘LESAC’ merely indicates the company name. It also argues that the sign that really identifies the opponent’s goods and services is , which is present in the majority of the evidence submitted.
In this regard, the Opposition Division deems that, even if, in principle, the use of the sign as a company name or trade name is not, of itself, intended to distinguish goods or services, the use of a business, company or trade name can be regarded as use ‘in relation to goods’. Moreover, in the present case, the use of the company name at the top of the invoices and on the website, depending on how the sign appears on them, may also be suitable to support genuine use of the registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 44-45).
Consequently, the Opposition Division considers that the evidence filed by the opponent is suitable to support genuine use of the aforementioned earlier marks, as it is possible to establish a link between the company name appearing in the invoices, the logo appearing in the online shop printouts and on the product labels, and some of the goods in Classes 18 and 25, independent of the fact that the registered trade mark is used in combination with other elements.
In fact, the figurative depiction – consisting of a stylised letter ‘L’ inside a red circle above the stylised verbal element ‘LESAC’, along with some other decorative elements – of the registered word mark ‘LESAC’ constitutes an acceptable means of bringing the mark in question to the attention of the public and, consequently, does not affect the distinctiveness of the earlier marks, ‘LESAC’ and , which are registered as word and figurative marks for goods in Classes 18 and 25 and services in Class 35. In addition, the additional verbal element ‘St. Tropez 1964’ that appears at the bottom of the logo merely designates or refers to the origin and year of the goods offered by the opponent or the establishment of the company or brand. This additional element is therefore not distinctive and, furthermore, is clearly subordinate to the verbal element ‘Lesac’. As such it does not alter the distinctive character of the registered trade marks (30/11/2009, T-353/07, Coloris, EU:T:2009:475, §§ 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).
Therefore, the use of the earlier marks as described above constitutes use of the signs as trade marks in the course of trade and in a form differing in elements that do not alter the distinctive character of the marks in the form in which they were registered.
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).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of earlier Spanish trade marks No 919 900 (4) and No 2 244 284 (7) during the relevant period in the relevant territory for the following goods:
Class 18: | Handbags and purses made from leather. |
Class 25: | Ready-made clothing, footwear. |
However, as regards earlier Spanish trade mark No 2 244 285 (5), it must be noted that simply the sale of goods is not a service within the meaning of the Nice Classification. A fortiori, the direct sale of one’s own goods is not a service per se either, and the invoices and sales figures contained in the sworn statement prove the use of the marks only in relation to the goods that are being sold.
The evidence submitted indicates that the company sells goods, under the brands seen above, directly to consumers via retail shops and its own online shop. This does not constitute retail services (the bringing together of a variety of goods for the benefit of others), but rather constitutes use of the trade marks for the goods in question, since the simple sale of one’s own goods is not a service, as explained above.
Therefore, the Opposition Division considers that the evidence submitted is not sufficient to prove the use of Spanish trade mark registration No 2 244 285 (5) for retail sales services.
Consequently, 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 examine the opposition in relation to the opponent’s Spanish trade mark registrations No 919 900 (4) and No 2 244 284 (7) simultaneously.
- The goods
The goods on which the opposition is based, and in relation to which genuine use of the earlier marks has been established, are the following:
- Spanish trade mark registration No 919 900 (4)
Class 18: | Handbags and purses made from leather. |
- Spanish trade mark registration No 2 244 284 (7)
Class 25: | Ready-made clothing, footwear. |
The contested goods, after a limitation by the applicant, are the following:
Class 18: | Handbags; traveling bags; briefcases; leather briefcases; leather credit card holders; wallets; leather document briefcases; leather key cases; purses; suit cases; cosmetic bags sold empty; sports bags included in this class; bags for athletic equipment; evening and shoulder bags for ladies; leather shopping bags; school bags; garment bags for travel; suit carriers for travel; shoe bags for travel; beach bags; diaper bags; backpacks; Boston bags; traveling trunks; duffel bags; overnight bags; carry-on bags; satchels; opera bags; vanity cases (not fitted); hides; cases and boxes made of leather; bags made of leather for packaging; leather straps; umbrellas; leather leashes. |
Class 25: | Coats; jackets; trousers; skirts; tops; raincoats; overcoats; belts; braces for clothing; suits; stuff jackets; jumpers; jeans; dresses; cloaks; parkas; shirts; T-shirts; sweaters; underwear; baby dolls being nightwear; bathrobes; bathing costumes; négligée; swimsuits; dressing gowns; shawls; scarves; ties; neckties; sweat shirts; under shirts; polo shirts; body suits; shorts; stockings; socks; shoes; slippers; overshoes; galoshes; wooden clog; soles for footwear; footwear upper; boots; ski boots; half boots; esparto shoes or sandals; sandals; bath sandals; gloves; mittens; hats and caps; visors (headwear). |
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 18
The contested handbags; purses include, as broader categories, the opponent’s handbags and purses made from leather. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested evening and shoulder bags for ladies; Boston bags; satchels; opera bags are included in the broad category of, or overlap with, the opponent’s handbags and purses made of leather. Therefore, they are identical.
The contested traveling bags; briefcases; leather briefcases; leather credit card holders; leather document briefcases; leather key cases; suit cases; cosmetic bags sold empty; sports bags included in this class; bags for athletic equipment; leather shopping bags; school bags; suit carriers for travel; shoe bags for travel; backpacks; traveling trunks; duffel bags; overnight bags; carry-on bags; vanity cases (not fitted); cases and boxes made of leather; bags made of leather for packaging; garment bags for travel; beach bags; diaper bags are all luggage, bags, cases or carriers. Their purpose is to store items, mainly for carrying them, travelling with them, transporting them or keeping them safe. As such, they have the same purpose as, or a similar purpose to, the opponent’s handbags and purses made of leather. They have the same distribution channels and target the same relevant public. Moreover, they all are or can also be made of leather and therefore might come from the same providers. Therefore, they are similar.
The contested leather straps and wallets are complementary to, or are at least used commonly in combination with, the opponent’s goods insofar as the contested goods can form part of, be attached to or be used to secure the closure of, or to assist in carrying or be carried inside, the opponent’s handbags and purses made of leather. It is likely that the end users, the origin and the distribution channels and sales outlets of these goods will be the same. Therefore, these goods are similar.
The contested hides are raw materials, namely the skins of various kinds of animals (or imitations thereof). The fact that one product is used for manufacturing another (for example, leather for handbags) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned hides are intended for use in industry rather than for direct purchase by the final consumer. The contested goods are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s handbags and purses made of leather in Class 18 and ready-made clothing, footwear in Class 25. Therefore, these goods are dissimilar.
The contested leather leashes are used for leading or restraining an animal. These goods are not related to the opponent’s goods. They have different natures and purposes. Furthermore, they are normally manufactured by different companies and have different trade channels. Therefore, the contested goods are dissimilar to the opponent’s handbags and purses made of leather in Class 18 and ready-made clothing, footwear in Class 25.
The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod. The nature of these products is very different from that of the opponent’s goods. They serve very different purposes and are usually manufactured by different companies. Therefore, these contested goods are dissimilar to the opponent’s handbags and purses made of leather in Class 18 and ready-made clothing, footwear in Class 25.
Contested goods in Class 25
The contested coats; jackets; trousers; skirts; tops; raincoats; overcoats; belts; braces for clothing; suits; stuff jackets; jumpers; jeans; dresses; cloaks; parkas; shirts; T-shirts; sweaters; underwear; baby dolls being nightwear; bathrobes; bathing costumes; négligée; swimsuits; dressing gowns; shawls; scarves; ties; neckties; sweat shirts; under shirts; polo shirts; body suits; shorts; stockings; socks; gloves; mittens belong to the opponent’s broader category of ready-made clothing. They are therefore identical.
The contested shoes; slippers; overshoes; galoshes; wooden clog; boots; half boots; esparto shoes or sandals; sandals; bath sandals; ski boots are included in the opponent’s broader category of footwear. They are identical.
The contested hats and caps; visors (headwear) are similar to the opponent’s footwear, since they can be manufactured by the same companies, can coincide in their purpose and target the same relevant public via the same distribution channels.
The contested soles for footwear; footwear uppers are all integral parts or fittings of footwear. The mere fact that they are made of leather or are used to manufacture final products in Class 25 is not sufficient to render them similar to the opponent’s goods. The contested goods and the opponent’s goods do not target the same consumers; moreover, they do not have the same distribution channels or commercial origins, as they usually target undertakings that manufacture the end product and not at the general public. Furthermore, they are not complementary to or in competition with one another. Consequently, they are dissimilar to all the opponent’s goods in Classes 18 and 25.
- 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 are directed at the public at large. The degree of attention is considered average.
- The signs
(1) LESAC | |
(2) | |
Earlier trade marks | Contested sign |
The relevant territory is Spain.
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).
Contrary to one of the applicant’s arguments, the earlier registered trade marks for which genuine use has been proven and that must be compared with the contested sign are the word mark ‘LESAC’ and the figurative sign , and not the sign .
The contested sign consists of the words ‘le Sac’ written in a handwriting-style typeface in black; immediately below this element is the number ‘11’, depicted in a standard black font.
Contrary to another of the applicant’s arguments, French is not generally understood by the general public in the relevant territory (Spain). Therefore, the words ‘le Sac’ of the contested sign have a meaning neither separately nor in combination for the relevant public and this element is consequently distinctive.
The element ‘11’ of the contested sign will be associated with the number it designates by the relevant public. As it has no relation to the relevant goods, it is also distinctive.
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 coincide in the words ‘LE SAC’ present identically in all of the signs: as a single word in the earlier marks and as two words in the contested sign. However, they differ in the element ‘11’ and the stylisation of the contested sign. The coinciding letters in the signs are significant and, even though the element ‘11’ and the stylisation of the words in the contested sign create some visual differences between the signs, earlier mark (1) and the verbal element of earlier mark (2) are completely reproduced as the first element of the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‛LE-SAC’, present identically in all of the signs. The pronunciation of the signs differs in the number ‘11’ (i.e. /once/) of the contested sign, which has no counterpart in the earlier marks.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘11’ of the contested sign will be associated with the meaning explained above. To that extent, the signs are conceptually not 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 marks
The distinctiveness of the earlier marks 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 any of its marks is 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 marks 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.
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).
The goods themselves are fairly ordinary consumer products that are commonly purchased in establishments or shops where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).
The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. The degree of attention of the consumer when purchasing them is average. Both of the earlier marks have a normal degree of distinctiveness.
The signs are visually and aurally similar to an average degree, and the conceptual difference introduced by the presence of the differing element ‘11’ has little impact, as it is common in the fashion industry to create sub-brands or different product lines by combining the main element with additional prefixes, suffixes or numbers, as is the case here.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
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).
Both parties refer to previous decisions of the Office to support their arguments, especially as regards the comparison and similarity between the signs. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to, especially by the applicant, are not relevant to the present proceedings, as the assumption of the presence of a weak or descriptive element in the signs is of utmost importance and totally changes the situation as regards the comparison of the signs. Be that as it may, this point has been duly considered in section c) by the Opposition Division.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registrations No 919 900 (4) and No 2 244 284 (7).
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade marks.
The rest of the contested goods 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 goods cannot be successful.
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 contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Rasa BARAKAUSKIENE | Fabian GARCIA QUINTO | Ana MUÑIZ RODRIGUEZ |
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.