limango | Decision 1454968 - CONSOLIDATED ARTISTS B.V. v. Limango GmbH

Date Published: Sep 25, 2017

OPPOSITION No B 1 454 968

Consolidated Artists B.V., Lijnbaan 68, 3012 EP Rotterdam, The Netherlands (opponent), represented by Cabinet Degret, 24, place du Général Catroux, 75017 Paris, France (professional representative)

a g a i n s t

Limango GmbH, Landshuter Allee 10, 80637 München, Germany (applicant), represented by White & Case LLP, Valentinskamp 70 / Emporio, 20355 Hamburg, Germany (professional representative).

On 24/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 454 968 is partially upheld, namely for the following contested goods and services:

Class 25: Clothing, footwear, headgear.

Class 35: Retail services, including via the Internet, in relation to soaps, perfumery, essential oils, cosmetics, hair lotions, goods in precious metals or coated therewith, jewellery, precious stones, goods made of leather and imitations of leather, trunks and travelling bags, umbrellas, clothing, footwear, headgear.

2. European Union trade mark application No 6 943 096 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 6 943 096. The opposition is based on European Union trade mark registration No 3 360 815. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in France and Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 16/05/2008. However, the contested mark has a priority date of 12/12/2007. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain and France prior to that date.

The contested trade mark was filed for the following goods and services:

Class 25: Clothing, footwear, headgear.

Class 35: Arranging and billing of commercial transactions, for others, including within the framework of e-commerce; arranging contracts, for others, for the buying and selling of goods by means of online shopping on computer networks and/or other sales channels; collating of data in computer databases; presentation of goods on communications media for retail purposes; retail services, including via the Internet, in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, dental wax, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, musical instruments, paper, cardboard and goods made from these materials, not included in other classes, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, textiles and textile goods, clothing, footwear, headgear; arranging of contracts, for others, for the buying and selling of goods and the providing of services, including on the Internet (included in class 35), collating and systemising of data in computer databases, advertising.

Class 38: Telecommunications services for the operation and rental of telecommunications equipment, namely providing portals on the Internet; providing access to global computer networks for the retrieval of sound, images and other data and information of all kinds, including via the Internet; electronic transmission of sound, images and other data and information of all kinds, in particular via the Internet.

Class 39: Delivery of mail-order goods; packaging and storage of goods.

Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing; footwear; headgear.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 16/08/2009 and 19/08/2009 the opponent submitted the following evidence:

Annex 1: Extracts from the opponent’s website, showing the history of the opponent’s company and mentioning that ‘MANGO’ is ‘a famous multinational company established in 1984 which designs, manufactures and markets women’s and men’s clothing and accessories.
Annex 2: Extract from magazine ‘Franquicias Hoy’ of January 1999, where ‘MANGO’ is mentioned as receiving an award for best exported business concept.
Annex 3: Two Sworn affidavits: The first affidavit is of 06/05/2003, signed by Mr. Jaume Passarell Beya, a legal advisor of Consolidated Artists B.V..The affidavit provides turnover and promotional marketing expenditures for the years 1996 until 2001 for the company MANGO. The second affidavit of 07/05/2001, is signed by Mr. Isak Andic Ermay, a chairman of Board and Legal Representative of Diknah S.L., Barcelona. It refers to sales of MANGO goods and advertising and promotional expenditures in Spain (years 1998 until 2000).
Annex 4 and 5: Press reviews and articles for different countries, mentioning MANGO:

France: Press releases from 1999, 2001, 2003, 2005 published in different magazines, for example Monde of 25/05/1999, Le Nouvel Observatour of 12/05/1999 (‘the young Catalan group MANGO knows a fulgurating growth with a turnover increasing for 50% in 1998’), La Tribune of 12/05/1999 and 19/05/1999 (mentioning MANGO as ‘a chain store ..which have developed with more force in France as well as in Great Britain…’), La Nouvelle Republiǫue Du Cent Quest, La Tribune of 26/03/1999 (‘a Spanish clothing group MANGO displayed a turnover increase of 50% …’), Elle of 03/12/2001 (‘MANGO, the prestigious women’s clothing label cements its old on the French market….’), Le Point of 19/09/2003 (‘In eight years, MANGO carved out an empire in the mercilles world of ready-to-wear. With 647 shops in 70 countries, the Spanish trade mark is great hit with the European women.’), etc..
Spain: Press releases from 1998, 1999, 2001, 2003 published in different magazines: for example La Vanguardia (‘…MANGO will open its 100th company-owned store…it ended the financial year 1998 with more than 400 stores in 42 countries…’), La Gaceta of 08/02/1999 (‘… world’s second largest textile export company…’), El Pais of 28/02/1999 (‘Mango is one of the leading groups within the clothing production sector…’), La Razon of 21/09/2003 (‘With only 20 years of existence, Mango became the second exporting company of textile of Spain….’), Cinco Dias of 21/11/2001 (‘…Mango,… are the most famous trade marks in the world of fashion in Spain’), etc.

Annex 6: An extract from a Survey conducted in November 2001 in Spain which shows that MANGO is very known among young people in Spain.

Annex 7: Advertisements from different magazines that were published in the 90s in France and Spain, showing perfumes marked ‘MANGO’.

Annex 8: Pictures of ‘MANGO’ advertisements on busses.

Annex 9: Extracts from the website www.news.mango.com providing the news about participation of ‘MANGO’ in different events (for example FERO foundation for world breast cancer day or Toronto Fashion Week in 2008).

Annex 10: An extract from La Gazeta of 04/05/1999, mentioning that ‘MANGO’ launched it first audio-visual campaign.

Annex 11: Articles published in 1999, 2001, 2003 referring to presence of ‘MANGO’ on the internet (the mark ‘MANGO’ was mentioned in several online magazines and websites).

Annex 12: Document providing a short history of the opponent.

Annex 13: Article by Brands of Spain Forum of 2003, where ‘MANGO’ is mentioned among leading brands of Spain in connection with woman clothing (MANGO – ‘Brand of women’s clothing present in more than 70 countries in 5 continents’).

Annex 14: Extract from Sustainability Report 2007 for ‘MANGO’ brand.

Annex 15: Extract showing turnover corresponding to foreign markets and staff 2007 (‘The consolidated turnover for the 2007 financial year amounted to 1,020,356 thousand euros, while the consolidated profit reached 129,139 thousand euros’…).

Annex 16: Extracts showing worldwide presence of the brand ‘MANGO’ (1223 stores in 92 countries in 2009).

Annex 17: Document providing the list of ‘MANGO’ shops in the European Union.

Annex 18: Information about the ‘MANGO’ advertising budget for EU (from the year 2000 until 2008).

Annex 19: an extract from the opponent website, mentioning the concept of MANGO brand.

Annex 20: examples of ‘MANGO’ (woman clothing) catalogues for Spain.

Annex 21: a compilation of copies from different Spanish and French fashion woman magazines from 1995 until 2007 (i.e. Elle, Woman, La Depeche, Depeche Mode, Femme Actuelle, Cosmopolitan, Glamour,…) where the mark ‘MANGO’ was mentioned in relation to woman clothing.

Annex 22: documents showing the involvement of ‘MANGO’ company in different activities (collection of used batteries, campaign against AIDS, creation of outfits for Barbie’s 35 anniversary).

Annex 23: a document, showing top models (i.e. Claudia Schiffer and Eva Herzigova,) advertising ‘MANGO’ products.

Annex 24 and 25: copy of first page of ‘MANGO’ catalogues (issued in 1992, 1993 and 1994) featuring top models on the first page of the catalogues.

Annex 26: document showing famous people such as Scarlett Johansson and Claudia Schiffer promoting ‘MANGO’ products.

Annex 27: Decisions recognizing the notoriety of the trade mark ‘MANGO’ (i.e. Decision of the First Board of Appeal R 308/2003-1 of 12/03/2004).

Annex 28: an extract from the website www.class46.eu, mentioning ‘MANGO’ as one of the most valuable Spanish brands (38th place in 2009). A study was done by Brand Finance Iberia.

Annex 29: document showing top performing brands 2008 issued by Interbrand (Spanish apparel brand ‘MANGO’ is mentioned as 19th in 2008 with value of 702 million EUR).

Annex 30: extract from document Best retail brands 2009 issued by Interbrand in 2009 (Spanish brand ‘MANGO’ is mentioned on place 17 with value of 747 million EUR)

Annex 31: ranking of the most popular websites issued by www.alexa.com (www.mangoshop.com is mentioned as 59th and as 10th).

Annex 32: excerpt from Google for the entry MANGO.DE which provides also the entry for applicant’s company ‘LIMANGO’.

Annex 33: copies of advertisements for clothing and footwear products taken from different fashion magazines (for example Cosmopolitan, Jeune et Jolie, Girls, Vital, Lolie, Figaro Madame, Maxi, Voici, Isa, Prima, Mania, Maria Claire, Vogue, El Emanal, Mia, Elle, all issued in France (in 2001) and Spain.

Assessment of the evidence

With a view to demonstrate the reputation of the earlier mark, the opponent relied on several advertisements published in different women fashion magazines (Annex 21, 33), on extracts from Interbrand Rankings (Annex 28, 29 and 30), catalogues (Annex 20, 24 and 25) and some articles or press releases (Annex 4, 5, 11 and 13) mentioning trade mark ‘MANGO’.

From the evidence as a whole it is clear that the trade mark ‘’ has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by independent and diverse sources. The Interbrand rankings ascertain that ‘MANGO’ is one of the world’s leading branding firms. It ranked the brand at number 38 in 2008 and number 17 in 2009 in its ‘Top 100 brands’ with impressive brand values (i.e. EUR 1,020,356 thousand in 2008). Furthermore, there are references in the press to its success (Annex 28, 30 and 31) which all unequivocally show that the mark ‘’ enjoys a high degree of recognition among the relevant public in connection with clothing in Class 25 at least in Spain and France. In addition, given the important and extensive physical presence of the trade mark ‘MANGO’ in Spain and France, the extensive nature of advertising in Spanish editions of well-known woman’s magazines, there is sufficient evidence that the ‘MANGO’ trade mark is known by a significant proportion of Spanish and Frenchconsumers.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to clothing, whereas there is no reference to the remaining goods and services.

The signs

limango

Earlier trade mark

Contested sign

The relevant territory is the European Union.

The contested mark is a word mark. In the case of word marks it is the word as such which is protected and not its written form. Therefore it is irrelevant if the mark is written in small or capital letters.

The contested sign is a word mark ‘limango’ with no meaning. The earlier sign is a figurative mark consisting of the word ‘MANGO’ in slightly stylised capital letters. The word ‘MANGO’ will be associated with an edible tropical fruit. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

Visually, the signs are similar to the extent that they coincide in the letters ‘mango’. However, they differ in the additional letters ‘li’ placed at the beginning of the contested mark. The marks also differ in the slightly stylised typeface of the earlier mark.

The signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the letters ‛mango’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛li’ placed at the beginning of the contested mark which have no counterpart in the earlier sign.

The signs are aurally similar to an average degree.

Conceptually, the earlier mark will be associated with an edible tropical fruit. The contested sign lacks any meaning.

The opponent claims that the letters ‘LI’ of the contested mark may evoke, in some languages, a definite article like ‘le’ or ‘la’ in French, ‘el’ in Spanish or ‘il’, ‘lo’ and ‘la’ in Italian. As a consequence, a consumer with weak knowledge of foreign languages, the syllable ‘li’ will make him think of a definite article and will understand the contested mark as ‘the mango’. The Opposition Division cannot agree with either of these assertions and neither has the opponent supported these arguments with any evidence.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are visually and aurally similar to an average degree. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67 to § 69; and18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 44). Moreover, the stronger the distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark.

Therefore, it is in the light of the abovementioned jurisprudence that the opponent’s claim must be examined.

It should also be remembered that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. Thus, whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53 and the case-law cited therein).

In the present case, as seen above, the signs are visually and aurally similar to an average degree since the word ‘MANGO’ of the earlier mark is entirely included in the contested mark. Admittedly, there are also differences between the signs insofar as the contested mark contains additional letters ‘li’ at the beginning of the sign.

The word ‘MANGO’ is a word, which will be understood throughout the European Union, referring to to a large sweet yellowish fruit which grows on a tree in tropical countries, and which is perfectly distinctive for all the relevant goods and/or services covered by the earlier mark. The contested mark on the other hand has no meaning.

Although the relevant public may or may not see the word ‘MANGO’ in the contested mark, they will clearly perceive that the contested sign includes the same letters ‘mango’ as the earlier mark. Therefore, it is the opinion of the Opposition Division that the visual and aural similarity in the letters ‘MANGO’ would reflect in the minds of the relevant consumers the earlier reputed trade mark.

As regards the distinctiveness of the earlier mark, the word ‘MANGO’ is inherently distinctive, in particular, by virtue of the fact that it is a word without any meaning in relation to the goods and services designated by it. In addition, as already shown above, the earlier mark has been found to enjoy reputation in France and Spain in connection with clothing.

Turning to the relevant goods and services, the contested application seeks protection for services in Classes 25, 35, 38 and 39.

The contested clothing in Class 25 for which protection is sought under the contested sign, are obviously identical to the opponent’s woman clothing in Class 25 for which the reputation was proven.
Moreover, the contested footwear and headgear are similar to woman clothing as they have the same purpose. Moreover, they can coincide in producer, end user and distribution channels.
There is also an obvious connection between the contested retail services, including via the Internet, in relation to clothing which are services consisting of activities around the actual sale of the opponent’s reputed goods. These are, therefore, often provided by the manufacturer of those goods, which could as explained above be the same entity as the producer of the reputed goods. Further, there is also a connection between the contested retail services, including via the Internet, in relation to footwear, headgear in Class 35 and the earlier reputed goods in Class 25 to the extent that they are somehow connected to the opponent’s reputed goods. Even if these connections do not give rise to a similarity between the contested services and the opponent’s reputed goods, because the goods involved in the retail services and the specific goods covered by the earlier mark are not identical, these are at least similar to the opponent’s reputed goods in Class 25, as they may have the same nature, purpose and method of use. These goods may also coincide in producers, end users and distribution channels. Furthermore, they may be in competition to each other.
The same reasoning applies to the contested retail services, including via the Internet, in relation to goods in precious metals or coated therewith, jewellery, precious stones, goods made of leather and imitations of leather, trunks and travelling bags, umbrellas. Nowadays, the business involved in production of clothing also trade other related fashion articles considered as accessories. These are neighbouring trade sectors that tend to go hand in hand and are all included in the fashion sectors.
In relation to the contested retail services, including via the Internet, in relation to soaps, perfumery, essential oils, cosmetics, hair lotions, the Opposition Division considers that there is also a connection between the mentioned services and the opponent reputed goods clothing. Nowadays, the business involved in marketing clothing, in particular
the most successful and trendy brands, also trade other related products such as perfumery and cosmetics. In fact, the opponent showed that ‘MANGO’ is not only known for clothing but also for other complementary products such as perfumes (Annex 7).

Given the recognition that the earlier mark enjoys for clothing, the contested sign, when used in connection with the mentioned services in Class 35 will become associated with idea of fashion and modern style that surrounds the reputed ‘MANGO’ brand (see section ‘Unfair advantage’ of this decision).

Therefore, taking into account and weighing up all the relevant factors of the present case and in particular the reputation of the earlier mark and the proximity of the goods and services concerned as explained, the Opposition Division concludes that the gap between some of the contested services and the earlier reputed goods is not so large and consequently there exists, at least, prima facie, a possibility that when encountering the contested mark in relation to above mentioned contested services in Class 35, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. This is obviously also valid for the contested goods in Class 25. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

However, the same conclusion cannot be reached as far as the remaining contested retail services, including via the Internet, in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, dentifrices, dental wax, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, horological and chronometric instruments, musical instruments, paper, cardboard and goods made from these materials, not included in other classes, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, leather and imitations of leather, animal skins, hides, and walking sticks, whips, harness and saddlery, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, textiles and textile goods, arranging of contracts, for others, for the buying and selling of goods and the providing of services, including on the Internet (included in class 35) in Class 35 are concerned. The contested services lack the common point of having the same goods as the subject of these retail services and the opponent’s clothing. Despite the fact that retail services are provided by retailers/traders and are (same as the opponent’s goods clothing) usually directed at the general consumer, the mentioned retail services are rendered by specialised companies in such distinct areas that the later mark is unlikely to bring the earlier mark to the mind of the relevant public, even if the relevant section of the public for the services/goods covered by the conflicting marks could overlap to some extent.

The same conclusion applies to the contested presentation of goods on communications media for retail purposes; collating of data in computer databases; arranging and billing of commercial transactions, for others, including within the framework of e-commerce; arranging contracts, for others, for the buying and selling of goods by means of online shopping on computer networks and/or other sales channels; collating and systemising of data in computer; advertising in Class 35. These contested services in Class 35 are unrelated to clothing in Class 25.

There is also no link between the contested delivery of mail-order goods; packaging and storage of goods in Class 39 as there is no overlap between the relevant sections of the public for the trade marks in dispute. The contested services are aimed at professionals while the goods for which a reputation has been assumed are aimed at the general public. Given that the public for the contested trade mark is completely distinct from the relevant section of the public among which the earlier trade mark enjoys a reputation, no association will be made between the signs.

Also, in relation to the contested services in Class 38, these services do not relate to the opponent’s market sector of clothing. There is no sufficiently close connection between companies involved in telecommunications and companies manufacturing clothing. Neither is such a link apparent from the evidence filed by the opponent. The fact that the signs are similar and the fact that the earlier mark enjoys a reputation for goods in Class 25 are not sufficient to automatically conclude that the relevant public is likely to establish a mental association between the signs concerned in relation to the mentioned services.

Bearing this in mind, taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that in relation to the remaining contested services in Class 35 and the services in Classes 38 and 39, it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

For the sake of completeness it is also noted that in any case the opponent failed to file any evidence or at least put forward a coherent line of arguments, showing what the unfair advantage and/or detriment to distinctiveness would consist of and how it would occur, which could lead to the prima facie conclusion that such events are indeed likely in the ordinary course of events in relation to the remaining services in Class 35 and the services in classes 38 and 39 concerned. Indeed, in its submissions the opponent limits itself to very general statements without any particular argumentation or explanation related to the services at issue.

Therefore, the opposition is considered partially not well founded under Article 8(5) EUTMR and must be rejected insofar as it is directed at presentation of goods on communications media for retail purposes; advertising; collating of data in computer databases; arranging and billing of commercial transactions, for others, including within the framework of e-commerce; arranging contracts, for others, for the buying and selling of goods by means of online shopping on computer networks and/or other sales channels; retail services, including via the Internet, in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, dentifrices, dental wax, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, horological and chronometric instruments, musical instruments, paper, cardboard and goods made from these materials, not included in other classes, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, leather and imitations of leather, animal skins, hides, parasols and walking sticks, whips, harness and saddlery, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, textiles and textile goods, arranging of contracts, for others, for the buying and selling of goods and the providing of services, including on the Internet (included in class 35), collating and systemising of data in computer databases, advertising in Class 35, Telecommunications services for the operation and rental of telecommunications equipment, namely providing portals on the Internet; providing access to global computer networks for the retrieval of sound, images and other data and information of all kinds, including via the Internet; electronic transmission of sound, images and other data and information of all kinds, in particular via the Internet in Class 38 and Delivery of mail-order goods; packaging and storage of goods in Class 39.

The examination of the opposition under this article will therefore continue only in relation to those goods and services in Classes 25 and 35 for which it has been determined above that consumers will be likely to establish a mental ‘link’ between the signs.

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following:

The earlier MANGO trade mark enjoys an extremely high degree of reputation and distinctive character. The earlier mark is notoriously known for its high quality fashion products for urban and modern woman but also for its successful online presence and notably its online shops which generate a considerable profit.

The positive image conveyed by the prior MANGO trade mark, which already extends to many goods and services other than apparel related ones, as well as its prestige in the fashion domain and other markets is incontestably shown in the documents attached.

The positive quality image of the earlier trade mark is liable to influence the choice of the public targeted by the products and services claimed by the challenged application, who will attribute the quality of the opponents authentic notorious goods to the goods and services proposed by the holder of the challenged EUTMA.

The holder of the LIMANGO runs a website accessible under www.limango.de, containing an online shop where Internet user can buy fashion products for woman at a reduced price and which are initially commercialised by competitors of the opponent. Therefore, it is clear that the holder of the challenged EUTMA will benefit from the earlier mark’s quality image and prestige, which may attract consumers looking at MANGO products

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the goods and services in Classes 25, 35, 38 and 39. As seen above, the earlier trade mark was found to have a reputation for clothing in Class 25.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

The opponent is not only notoriously known for its high quality fashion products for urban and modern women but also for its very successful Online presence and notably its Online shops which generate a considerable profit.
The positive image conveyed by the mark MANGO is liable to influence the choice of the public targeted by the products and services claimed by the challenged application, who will attribute the quality of the opponents authentic notorious goods to the goods and services by the holder of the challenged EUTMA.
Given the good and strong reputation of the prior MANGO trade mark on one hand, the closeness of the conflicting signs and the possibility of a wrongful association on the other hand, the public will undoubtedly be reminded of the Opponent’s trade mark when being in contact with LIMANGO mark and will not only take advantage of the opponent’s reputation but also directly and adversely affect its business.
A part of the public having initially the intention to purchase MANGO branded products will erroneously buy a product marked LIMANGO, believing that there exists an economic link between the proprietors of these trade marks and expecting MANGO branded goods quality.

According to the Court of Justice of the European Union as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In the first place, it has to be recalled that the contested goods in Classes 25 and the relevant services in Class 35 for which link was established are all connected to the earlier reputed goods to a higher or lower extent, as explained in section c) above.

In the second place, the Opposition Division notes that the earlier mark enjoys a reputation in Spain and France in connection with clothing. The evidence submitted by the opponent shows that relevant public associates the earlier mark ‘MANGO’ with fashion and up-to-date style and one of the top women brands for clothing. Moreover, through the use of specific marketing techniques the opponent has reinforced certain commercial values which consumers perceive in the reputed brand, namely always modern clothing for affordable prices.

In the third place, as the earlier mark possesses a significant reputation in combination with a strong inherent distinctive character, it is tempting and easy for other market operators to try to benefit from its value. In the light of the very high reputation of the ‘MANGO’ trade mark, the probability of a future, non-hypothetical risk of unfair advantage being taken of the earlier mark’s reputation by the contested sign is so obvious that the opponent does not need to put forward and prove any other fact to that end (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 48).

Bearing in mind the foregoing, the Opposition Division endorses the opponent’s arguments and considers that, in view of the special connections between the earlier reputed goods and some of the contested goods and services, a substantial part of consumers may decide to turn to the applicant’s goods and services in Classes 25 and 35 in the belief that the contested sign is somehow linked to the opponent’s reputed mark, thus misappropriating its attractive powers and advertising value. When used on the same market or adjacent market sectors, namely in connection with clothing, footwear, headgear and retailing of clothing, footwear, headgear, jewellery and associated goods, the contested sign ‘limango’, may bring to the minds of consumers the earlier reputed mark. It will be recognised exactly because of the earlier mark’s intrinsic distinctiveness and the special brand attributes acquired through use, in the sense that it reflects the aforementioned appealing images.

The circumstances described hereinabove could positively influence the choice of the consumer as regards fashion articles and retail services of other producers and providers. This may stimulate the sales of the applicant’s goods and services to an extent which may be disproportionately high in comparison with the size of their own promotional investment and thus lead to the unacceptable situation where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up good will for its mark.

Therefore, the Opposition Division considers that, in view of the substantial exposure of the relevant consumers to the opponent’s reputed earlier mark, in relation to clothing for which a reputation has been found and taking into account the similarity of the marks, there exists a high probability that the use without due cause of the contested trade mark in respect of the above mentioned contested goods in Class 25 and some of the services in Class 35 may acquire some unearned benefit and lead to free-riding, that is to say, it would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark in relation to the following contested goods and services:

Class 25: Clothing, footwear, headgear.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

It follows that there is no need to examine whether other types also apply. There is also no need to examine these types of injury in connection with the contested services Arranging and billing of commercial transactions, for others, including within the framework of e-commerce; arranging contracts, for others, for the buying and selling of goods by means of online shopping on computer networks and/or other sales channels; collating of data in computer databases; presentation of goods on communications media for retail purposes; retail services, including via the Internet, in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, dentifrices, dental wax, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, precious metals and their alloys, horological and chronometric instruments, musical instruments, paper, cardboard and goods made from these materials, not included in other classes, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, leather and imitations of leather, animal skins, hides, parasols and walking sticks, whips, harness and saddlery, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, textiles and textile goods, arranging of contracts, for others, for the buying and selling of goods and the providing of services, including on the Internet (included in class 35), collating and systemising of data in computer databases, advertising in Class 35 and Telecommunications services for the operation and rental of telecommunications equipment, namely providing portals on the Internet; providing access to global computer networks for the retrieval of sound, images and other data and information of all kinds, including via the Internet; electronic transmission of sound, images and other data and information of all kinds, in particular via the Internet in Class 38 and Delivery of mail-order goods; packaging and storage of goods in Class 39. In relation to these services it has already been established that a link will not be made between the signs in relation to these services. So, logically, there can be no risk of injury.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following services:

Class 25: Clothing, footwear, headgear.

With regard to the remaining contested goods and services in Classes 35, 38 and 39 the Opposition Division will continue the examination of the opponent’s claims under 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.

a) The goods and services

After Cancellation Proceedings No 3404C of 27/09/2013 (confirmed by the General Court in case T-761/14), the goods and services on which the opposition is based are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; hair lotions; dentifrices.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes).

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing; footwear; headgear.

Class 35: Advertising, including online advertising on a computer network; rental of advertising space; organisation of exhibitions and trade fairs for commercial or advertising purposes; outdoor advertising; dissemination of advertising matter, direct mail advertising; advertising mail; updating of advertising material; sales promotions for others; shop-window dressing; demonstration of goods; distribution of samples; modelling for advertising or sales promotion; press reviews; retailing of clothing, perfume and personal accessories.

The remaining contested goods and services are the following:

Class 35: Arranging and billing of commercial transactions, for others, including within the framework of e-commerce; arranging contracts, for others, for the buying and selling of goods by means of online shopping on computer networks and/or other sales channels; collating of data in computer databases; presentation of goods on communications media for retail purposes; retail services, including via the Internet, in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, dentifrices, dental wax, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, precious metals and their alloys, horological and chronometric instruments, musical instruments, paper, cardboard and goods made from these materials, not included in other classes, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, leather and imitations of leather, animal skins, hides, parasols and walking sticks, whips, harness and saddlery, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, textiles and textile goods, arranging of contracts, for others, for the buying and selling of goods and the providing of services, including on the Internet (included in class 35), collating and systemising of data in computer databases, advertising.

Class 39: Delivery of mail-order goods; packaging and storage of 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 services in Class 35

The contested advertising is identically included in the list of the opponent’s goods and services.

The contested presentation of goods on communications media for retail purposes is included in the opponent’s advertising. The services are identical.

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/05/2015, T-715/13, Castello, ECLI:EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category (e.g. retail of sunglasses v sunglasses and retail of optical apparatus v sunglasses).

Therefore, the contested retail services, including via the Internet, in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, dentifrices, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, precious metals and their alloys, horological and chronometric instruments, paper, cardboard and goods made from these materials, not included in other classes, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, leather and imitations of leather, animal skins, hides, parasols and walking sticks, whips, harness and saddlery are similar to a low degree to the opponent’s Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; dentifrices; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; Precious metals and their alloys; horological and chronometric instruments; Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); Leather and imitations of leather; animal skins, hides; parasols and walking sticks; whips, harness and saddlery.

However, the contested retail services, including via the Internet, in relation to dental wax, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, musical instruments, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, textiles and textile goods are dissimilar to all the opponent’s goods and services. Retail services relating to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Too broad a protection would be given to retail services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark.

The contested Arranging and billing of commercial transactions, for others, including within the framework of e-commerce; arranging contracts, for others, for the buying and selling of goods by means of online shopping on computer networks and/or other sales channels; collating of data in computer databases are business administration services. They have no common points with advertising. The services have different nature, purpose, providers and end users. They are neither in competition, nor are they complementary. They are clearly dissimilar.

Contested services in Class 38

The contested telecommunications services for the operation and rental of telecommunications equipment, namely providing portals on the Internet; providing access to global computer networks for the retrieval of sound, images and other data and information of all kinds, including via the Internet; electronic transmission of sound, images and other data and information of all kinds, in particular via the Internet allow people to communicate with one another by remote means. These contested services and the opponent’s goods are dissimilar. This is not only because goods are articles of trade while services consist of the provision of intangible activities, but also because the services and goods in question have totally different natures, intended purposes and methods of use. In fact, the contested services have nothing relevant in common with any of the opponent’s goods in Classes 3, 18 and 25. They do not have the same producers, providers or distribution channels and are neither in competition, nor complementary. Therefore, they are dissimilar.

Contested services in Class 39

The contested delivery of mail-order goods; packaging and storage of goods are services used for moving goods from A to B and packing and keeping the goods in a particular place for a fee. These services are provided by specialist transport and packaging companies whose business is not the manufacture and sale of the goods that are transported or packed. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, these services are dissimilar to all the opponent’s goods in Classes 3, 18 and 25.

b) 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 a low degree are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average/may vary from average to high depending on the specialised nature of the goods and services.

c) The signs

The signs have already been compared above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

d) 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 trade mark enjoys enhanced distinctiveness in the European Union in connection with all the goods and services for which it is registered and reputation in relation to some of the goods, namely for some of the goods in Classes 3, 18 and 25 (see section a) of this decision). This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid here.

As seen above, the Opposition Division concluded that the earlier trade mark has acquired reputation in France and Spain for clothing (see section a) of this decision).

However, in relation to the remaining goods and services for which the opponent claimed enhanced distinctiveness and reputation, 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal in relation to the remaining goods and services.

e) 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).

The goods and services are partially identical, partially similar to a low degree and partially dissimilar. The sign are visually and aurally similar to an average degree. The attention of the consumer will vary between average (in relation to retail services) and high (in relation to advertising services) and the earlier mark has high distinctiveness for clothing and normal distinctiveness for the rest of the goods and services.

Although the aural and visual commonalities in the letters ‘MANGO’ cannot be denied, it must be borne in mind that, the mere fact that one sign is included in the other mark is not sufficient in itself to lead to an automatic finding of likelihood of confusion. The marks have a different beginning. This is particularly relevant in the present case since this is where the focus of the attention of the relevant public lies. The overall verbal and aural impression caused by the beginning of each sign is such that it eclipses the similarity that comes at the end of the signs, where it has a lower impact.

Moreover,whilst the word ‘MANGO’ conveys a meaning, there is no analogous or similar concept in the contested sign, ‘LIMANGO’. As the matter of fact, the contested sign lacks any semantic content at all. That puts such a distance between the signs as to counteract to a large extent the visual and aural similarities found between them. It suffices that one of the signs has, from the point of view of the relevant public, has a clear and specific meaning, so that the public is capable of grasping it immediately (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 54). In the present case, because of the concept carried by the earlier mark, the letter sequence that the signs share, ‘MANGO’, will not be singled out in the word ‘LIMANGO’. In contrast, it will be perceived as a mere coincidence in a string of letters.

Another factor that has to be taken into account is the degree of the relevant public’s attention. In the present case, at least in relation to the services found to be identical the level of attention will be high.

Although, the differences between the signs may not be particularly striking, they are still readily perceptible and are sufficient to enable the relevant public, not only the part with a high degree of attention, but also the part with an average degree of attention, to safely distinguish between them.

The opponent also refers to previous decisions of the Office to support its arguments. 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lars HELBERT

Janja FELC

Francesca CANGERI SERRANO

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.

limango | Decision 1454968 - CONSOLIDATED ARTISTS B.V. v. Limango GmbH

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