MARIZA | Decision 2717265
Date Published: Sep 25, 2017
OPPOSITION No B 2 717 265
Map Spain, C/. Calzados, 6, 03630 Sax, Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)
a g a i n s t
Marisa dos Reis Nunes, Avenida da Liberdade, Nº 180 E, 5º Direito, 1250-146 Lisboa, Portugal (holder), represented by Raul César Ferreira (Herd.) S.A., Rua do Patrocínio, 94, 1399-019 Lisboa, Portugal (professional representative).
On 10/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 717 265 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 265 086, namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 12 658 282. 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 goods
The goods on which the opposition is based are the following:
Class 18: Leather and imitations of leather, namely synthetic leather, Leather, unworked or semi-worked, Leather for shoes, Curried skins, Briefcases [leather goods], Laces (Leather -); Pouches, Namely handbags, Travelling handbags, Rucksacks, Beach bags, Wheeled bags, Gym bags, Garment bags, Shoe bags, Toiletry bags, cosmetic bags, Key bags, Duffel bags; School bags, satchels; Fanny packs; Baggage; Straps (Leather -); Attaché cases, briefcases; Holsters, Umbrella covers, Credit-card holders; Overnight bags; Leatherware; Small items of leatherware, namely billfolds, pocket wallets, purses not of precious metal, card cases, key cases; Hides, Animal skins, hides, Curried skins, Imitation leather, Worked or semi-worked hides and other leather; Trunks and travelling bags; Umbrellas, big umbrellas and walking sticks; Whips, harness and saddlery; Luggage, all the aforesaid goods being for men, women and children.
Class 25: Clothing, footwear, headgear, all the aforesaid goods being for men, women and children.
The contested goods are the following:
Class 18: Leather and animal skins, trunks and traveling bags; umbrellas, rain and sun umbrellas; walking sticks; whips and saddlery.
Class 25: Clothing, footwear and headgear.
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 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.
Contested goods in Class 18
Leather and animal skins; trunks and travelling bags, umbrellas, walking sticks; whips and saddlery are identically contained in both lists of goods.
The contested rain and sun umbrellas are included in the broad category of the opponent’s umbrellas. Therefore, they are identical.
Contested goods in Class 25
Clothing, footwear and headgear are identically contained in both lists of goods.
- 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 are directed at the public at large. The degree of attention is considered average.
- The signs
MARIZA | |
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 contested mark is a word mark, ‘MARIZA’. It is a female name that will be understood by part of the relevant public because it exists as such (in Portuguese) or because it is similar to an existing name (e.g. ‘Marcia’ in French and English or ‘Marisa’ in Spanish). For the rest of the public, it has no meaning. Furthermore, this verbal element has no meaning in relation to the goods at issue. Therefore, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The earlier mark is a figurative mark, containing the words ‘Marina Malizia’ in a stylised white typescript; the letter ‘M’ in ‘Marina’ is highly stylised and is depicted as a shape resembling a heart. Below these elements and in a rather small letters, which may be overlooked, are the words ‘COMFORT CLASS’ in upper case letters. All these verbal elements are placed against a square pink background, which has some decorative square shapes at the top and bottom.
The element ‘Marina’ is a female name (e.g. in Italian and Spanish) and can also mean ‘a specially designed harbour with moorings for pleasure yachts and small boats’ (e.g. in English, Spanish, Italian, French and Portuguese) (information extracted from Oxford Dictionaries on 22/07/2017 at https://en.oxforddictionaries.com/definition/marina); for part of the public, it has no meaning.
The word ‘Malizia’, which means ‘malice, spite’ in Italian (information extracted from Collins Italian-English Dictionary on 22/07/2017 at https://www.collinsdictionary.com/dictionary/italian-english/malizia), will be understood by the Italian-speaking part of the public and will be associated with this meaning by another part of the public, as the equivalent word in other languages (e.g. English, Spanish, French, Portuguese) is very similar; for part of the public, it has no meaning.
The word ‘comfort’ is an English word that means ‘a state of physical ease and freedom from pain or constraint’ (information extracted from Oxford Dictionaries on 22/07/2017 at https://en.oxforddictionaries.com/definition/comfort) and, therefore, it will be understood by the English-speaking part of the public and associated with this meaning by another part of the public, as the equivalent word in other languages (e.g. Italian, Spanish, French, Portuguese) is very similar; however, for the remaining part of the public, it has no meaning. The word ‘class’ means in English, inter alia, ‘a set or category of things having some property or attribute in common and differentiated from others by kind, type, or quality’ and, informally, ‘impressive stylishness in appearance or behaviour’ (information extracted from Oxford Dictionaries on 22/07/2017 at https://en.oxforddictionaries.com/definition/class) and will be associated with this meaning by the majority of the public, as its equivalent in other languages (e.g. Italian, Spanish, French) is very similar; for part of the public, it has no meaning.
The words ‘Marina Malizia’ have no meaning in relation to the goods at issue and are, therefore, distinctive. The words ‘comfort class’ allude to qualities (‘comfort’ refers to ‘physical ease’ and ‘class’ is widely associated with ‘showing stylish excellence’) of the goods in question (clothing, travelling bags, umbrellas) and, therefore, they are weak in relation to the contested goods, namely leather and animal skins, trunks and traveling bags; umbrellas, rain and sun umbrellas; walking sticks; whips and saddlery; clothing, footwear and headgear.
As regards the earlier mark, it is composed of distinctive verbal elements (‘Marina Malizia’) and figurative elements (the fanciful typescript), as well as figurative elements of a purely decorative nature (the square shapes). The words ‘Comfort Class’ are weak, as explained above. Therefore, the verbal elements ‘Marina Malizia’ and their figurative typescript are more distinctive than the figurative elements of a decorative nature. Furthermore, the verbal elements ‘Marina Malizia’ are the dominant elements of the earlier sign, as they are more eye-catching than the elements ‘Comfort Class’, which, due to their size, secondary position and weak distinctive character, are very likely to go unnoticed.
Visually, the signs coincide in their first four letters, ‘MARI’, in their sixth letter, ‘A’, and in the letter ‘Z’, which is the fifth letter of the contested sign and the fifth letter of the second word element of the earlier sign. However, they differ in that the earlier mark is composed of four verbal elements and of figurative elements (the fanciful typescript, the pink background and the decorative squares), whereas the contested sign is a one-word mark.
Although the signs coincide in certain letters, some of which are interspersed among other letters, the overall visual impressions that the signs create are very different due to the presence of many additional elements.
Therefore, the signs are visually dissimilar.
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 ‛Mari*a’ and ‘Ma*i**a’, present in both signs. The pronunciation differs in the sound of the letters ‘l’ and ‘i’ in the second word of the earlier mark and in the sound of the letters ‘comfort class’ in the earlier mark. It also differs in the sound of the letter ‘z’ in the contested sign (‘marina’ versus ‘mariza’).
Therefore, the signs are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that does not understand any of the distinctive verbal elements of the earlier mark and understands the contested sign as a female name, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
For the part of the public that understands any of the distinctive verbal elements of the earlier mark as ‘harbour’ and ‘malice’, and understands the contested sign as a female name, as the signs will be associated with dissimilar meanings, they are not conceptually dissimilar.
For the part of the public that understands any of the distinctive verbal elements of the earlier mark and does not understand the contested sign, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
For the part of the relevant public that does not understand any of the verbal elements of the earlier mark or the contested sign, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
For the part of the relevant public that understands only the elements ‘comfort’ or ‘class’ in the earlier sign, or both elements, which are in a secondary position, and does not associate the contested sign with any concept, this is not sufficient to establish any conceptual similarity, as these elements have a weak distinctive character and cannot identify the commercial origin of the earlier mark. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which the public will perceive as having no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
For the part of the relevant public that understands ‘Marina’ in the earlier mark and ‘Mariza’ in the contested sign as female names, the signs are conceptually similar to a certain extent.
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, despite the presence of some weak elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods are identical.
The signs are aurally similar to a low degree and visually dissimilar; conceptually, depending on the relevant public, the signs are disssimilar, a conceptual comparison is not possible or they are similar to a certain extent, as explained above. The contested sign is a one-word sign and the earlier mark is a figurative mark composed of four words and additional figurative elements. Although all the letters of the contested sign are present in the earlier sign, some of the letters that coincide, namely the letters ‘a’ and the ‘z’, are interspersed among other letters forming different words. In addition, there are sufficient visual differences due to the figurative and additional verbal elements (the first letter ‘M’ in the earlier mark resembles a heart shape and the element ‘Marina’ contains a letter ‘n’, rather than a letter ‘z’) to result in the signs creating different overall visual impressions.
Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them.
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).
According to the same line of case-law, 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).
Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35).
The Opposition Division considers that the differences between the signs – including the different numbers of verbal elements, the figurative typescript and the other figurative elements of the earlier mark, and the conceptual dissimilarity for part of the relevant public – are sufficient to counteract the low degree of visual and aural similarity between them. This is the case even for the part of the public for which the signs are conceptually similar to the extent that the words ‘Marina’ and ‘Mariza’ will both be perceived as female names, because they will nonetheless be perceived as different names.
Considering all the above, even for identical goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Patricia LÓPEZ FERNÁNDEZ DE CORRES | Ewelina SLIWINSKA | Dorothée SCHLIEPHAKE |
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.