LILLA P | Decision 2301862
Date Published: Oct 1, 2017
OPPOSITION No B 2 301 862
Jolidon Import Export s.r.l., Str. Tabacarilor Nr.1, 3400 Cluj-Napoca, Romania (opponent), represented by Ratza & Ratza SRL, Bulevardul A.I. Cuza NR. 52-54, Sector 1, 011056 Bucharest, Romania (professional representative)
a g a i n s t
Lilla p., LLC, 420 West 14th Street #3NW, New York NY 10014, United States of America (holder), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative).
On 28/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 301 862 is upheld for all the contested goods.
2. International registration No 1 162 827 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 1 162 827. The opposition is based on, inter alia, European Union trade mark registration No 11 266 053. 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 European Union trade mark registration No 11 266 053.
- The goods
The goods on which the opposition is based are the following:
Class 25: Clothing, namely, underwear, socks, bathing suits, t-shirts, pyjamas none of the aforesaid goods being evening dresses, wedding dresses, bridesmaid dresses or clothing for religious ceremonies.
The contested goods are the following:
Class 25: Wearing apparel, clothing, and clothing accessories, namely, anoraks, parkas, bathing suits, bathing trunks, bathrobes, beach coverups, beachwear, clothing belts, money belts, Bermuda shorts, bikinis, blazers, blouses, blousons, cloth bibs, bottoms, bras, brassieres, breeches, briefs, underwear briefs, camisoles, capes, cardigans, chemises, coats, leather coats, overcoats, rain wear, raincoats, coveralls, coverups, suits, suit coats, sport coats, culottes, top coats, dresses, dungarees, fleecewear, namely, vests, pants, jackets, pullovers, and mittens, all made of fleece material, foul weather gear, gloves, ski gloves, gauchos, gym suits, tops, knit tops, halter tops, hosiery, jackets, leather jackets, wind-resistant jackets, jeans, jerseys, jodhpurs, jumpers, jumpsuits, kerchiefs, knickers, knee highs, leg warmer leggings, lingerie, loungewear, maillots, miniskirts, mittens, mufflers, muffs, ear muffs, neckties, neckwear, night gowns, nightshirts, overalls, pajamas, panties, pants, ski pants, snow pants, sweat pants, pedal pushers, capris, rompers, shortalls, ponchos, pullovers, bathing and lounging robes, sarongs, sashes, scarves, shawls, shifts, shirts, golf shirts, knit shirts, polo shirts, sport shirts, undershorts, shorts, boxer shorts, gym shorts, sweatsuits, sweatshirts, sweatshorts, ski wear, skirts, slacks, sleepwear, slippers, slips, jogging suits, warm-up suits, sweaters, turtleneck sweaters, V-neck sweaters, swim trunks, swim wear, swim suits, T-shirts being sleeveless, long-sleeved, and short-sleeved, tank tops, bow ties, ties, tights, tracksuits, trousers, tunics, turtlenecks, underclothes, undergarments, thongs in the nature of underwear, underpants, undershirts, underwear, thermal underwear, vests, quilted vests, woven shirts, tops, snowboarding suits and footwear, namely, athletic footwear, insoles, leisure footwear, leather and rubber boots, moccasins, espadrilles, athletic shoes, shoes, clogs, sandals, sneakers, golf shoes, thongs in the nature of footwear, socks, sweat socks, and anklets; headwear, namely, bandannas, bandeaux, berets, sun visors, headbands, hats, hoods, head and wrist sweatbands, head scarves, babushkas and caps.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the holder’s and the opponent’s list of goods 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 25
The contested goods include items which fall under the broad description of clothing such as anoraks, cardigans, woven shirts or swim suits, to name but a few. The contested goods also encompass types of footwear, such as moccasins, espadrilles, athletic shoes, and headgear, such as sun visors, headbands, hats, hoods to name but a few. Finally, the contested goods also cover money belts. The earlier goods are specific items of clothing, namely, underwear, socks, bathing suits, t-shirts, pyjamas. In its observations, the holder claims that the opponent actually only produces ‘underwear’ and ‘bathing suits’. The Opposition Division must take into account the goods as specified in the list of the earlier mark, without any consideration of a purported market reality. Bearing this in mind, it is clear that all of the contested goods are at least similar to the opponent’s earlier items of clothing. In particular, footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Furthermore, Headgear and clothing are of an identical or very similar nature. They also 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 similarity at the very least between specific items of clothing is self-explanatory. The contested money belts may also be sold as a clothing accessory and have a very similar nature and purpose to the earlier goods. To conclude, the contested goods are at least similar to the earlier goods as they may be produced by the same manufacturers, distributed through the same channels, aimed at the same consumer and serve the same purpose.
- 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 at least similar are directed at the public at large. The degree of attention is average.
- The signs
LILLA P | |
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The words ‘LILLY’ and ‘LILLA’ will be understood as variants of the same name in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
‘LILLY’ in the earlier trade mark will be understood as referring to a type of flower (‘Lilly’ will merely be seen as an alternative way of writing ‘Lily’, the usual spelling) or a female first name, possibly deriving from ‘Elizabeth’. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. The earlier sign is also composed of a distinctive verbal element and a less distinctive figurative element (a diamond shape placed at the beginning of the sign) of a purely decorative nature. Therefore, the verbal element ‘LILLY’ is more distinctive than the figurative elements. The earlier mark has no element that could be considered clearly more dominant than other elements.
The element ‘LILLA’ of the contested sign will be understood as a female first name possibly deriving from ‘Elizabeth’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. The letter ‘P’ following ‘LILLA’ might be seen as standing for a surname. It is also distinctive for the relevant goods.
Visually, the signs coincide in the sequence of letters ‘LILL’. They differ in their last letters, ‘Y/A’, the figurative element of the earlier mark and the letter ‘P’ in the contested sign.
Therefore, taking into account all of the above findings regarding distinctiveness, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LILL’, present identically in both signs. The pronunciation differs in the sound of the letters following ‘LILL’, namely ‘Y/A’ and also the second element of the contested sign, ‘P’. ‛
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, namely both being female names deriving from ‘Elizabeth’. As the signs will be associated with a similar meaning, the signs are conceptually highly 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 mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods at issue have been found at least similar and the signs are visually, aurally and conceptually highly similar.
In the opinion of the Opposition Division, the relevant consumer will confuse these marks. The differences between them are minimal, confined to a basic figurative element in the earlier mark, which does little to distinguish it, a letter ‘P’ in the contested sign, and then the different final letter of two highly similar female names, ‘LILLY’ and ‘LILLA’. Even if the earlier mark brings to mind a flower, it is also such a well-known first name that this concept will come to mind simultaneously. The fact that ‘LILLY’ is also a region in France, as mentioned by the holder, does not detract from it being perceived as a female name. Furthermore, it is fairly common on the market for clothing and similar goods to be marketed using the names of people. Thus, it seems more likely that the relevant consumer will see a female name as opposed to a lesser known region in France.
The holder claims that the earlier mark lacks distinctiveness because it is a common female name. The Opposition Division has already held above that ‘LILLY’ is perfectly distinctive in connection with the goods. What needs to be decided in this case is how similar ‘LILLY’ is to ‘LILLA’ and whether there are sufficient elements to distinguish the two marks. In the view of the Opposition Division, consumers will instantly link ‘LILLY’ and ‘LILLA’, viewing them as variations of the same name and possibly seeing them both as deriving from the same root, namely ‘Elizabeth’. This constitutes a strong conceptual link, in addition to the visual and aural similarities between the signs. In this case, there are simply not enough differences between the marks to rule out confusion, taking account of all the arguments already given above.
In its observations, the holder argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘LILLY’. In support of its argument the holder refers to several trade mark registrations in Romania and the European Union.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘LILLY’. Under these circumstances, the holder’s claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the English-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 registration No 11 266 053. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right European Union trade mark registration No 11 266 053 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Vít MAHELKA | Lucinda CARNEY | Vanessa PAGE |
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.