N NYMPH UNIQUE DESIGN | Decision 2454141 - Nümph A/S v. SISTAS SAYISAL ILETISIM SANAYI VE TICARET ANONIM SIRKETI
Date Published: Sep 26, 2017
OPPOSITION No B 2 454 141
Nümph A/S, Ibsvej 1-3, 6000 Kolding, Denmark (opponent), represented by Gorrissen Federspiel Advokatpartnerselskab, Silkeborgvej 2, 8000 Aarhus C, Denmark (professional representative)
a g a i n s t
Sistas Sayisal Iletisim Sanayi Ve Ticaret Anonim Sirketi, Cinnah Caddesi, Farabi Sokak No: 35, Kat: 1, Sankaya, Ankara, Turkey (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).
On 25/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 454 141 is partially upheld, namely for the following contested goods and services:
Class 18: Leather and imitations of leather, and goods made of these materials, namely; attache cases; carrying cases; briefcase-type portfolios; cases for keys; key wallets; wallets; card wallets; purses; clutch purses; toilet bags; kit bags; baby carrying bags; backpacks, book bags, sports bags, bum bags, wallets and handbags; shopping bags; school bags; backpacks for carrying babies; infant carriers worn on the body; boxes made of leather; hat boxes of leather or imitation leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; whips, harness and saddlery.
Class 25: Clothing (except underclothing, beachwear and swimwear, leisure wear, nightwear); footwear, headgear.
Class 35: Advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of leather and imitations of leather, and goods made of these materials, namely, attache cases, carrying cases, briefcase-type portfolios, cases for keys, key wallets, wallets, card wallets, purses, clutch purses, toilet bags, kit bags, baby carrying bags; the bringing together, for the benefit of others, of backpacks, book bags, sports bags, bum bags, wallets and handbags, shopping bags, school bags, backpacks for carrying babies, infant carriers worn on the body, boxes made of leather; the bringing together, for the benefit of others, of hat boxes of leather or imitation leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, clothing, footwear, headgear (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.
2. European Union trade mark application No 13 140 868 is rejected for all the above goods and services. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 140 868. The opposition is based on European Union trade mark registration No 4 971 669. 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 and services
The goods and services on which the opposition is based are the following:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animals skins, hides; suitcases and bags, including valises, travelling bags, handbags, shopping bags, school bags, vanity cases, bags (envelopes, pouches) of leather, for packaging; umbrellas, parasols, purses and wallets.
Class 25: Clothing, footwear, headgear.
Class 35: Business management and business administration; retailing of goods, including clothing, footwear and headgear; business management and consultancy for retail stores.
The contested goods and services are the following:
Class 18: Leather and imitations of leather, and goods made of these materials, namely; attache cases; carrying cases; briefcase-type portfolios; cases for keys; key wallets; wallets; card wallets; purses; clutch purses; toilet bags; kit bags; baby carrying bags; backpacks, book bags, sports bags, bum bags, wallets and handbags; shopping bags; school bags; backpacks for carrying babies; infant carriers worn on the body; boxes made of leather; hat boxes of leather or imitation leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.
Class 25: Clothing (except underclothing, beachwear and swimwear, leisure wear, nightwear); footwear, headgear.
Class 35: Advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of leather and imitations of leather, and goods made of these materials, namely, attache cases, carrying cases, briefcase-type portfolios, cases for keys, key wallets, wallets, card wallets, purses, clutch purses, toilet bags, kit bags, baby carrying bags; the bringing together, for the benefit of others, of backpacks, book bags, sports bags, bum bags, wallets and handbags, shopping bags, school bags, backpacks for carrying babies, infant carriers worn on the body, boxes made of leather; the bringing together, for the benefit of others, of hat boxes of leather or imitation leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, clothing, footwear, headgear (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’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. Therefore, in the list of the goods in Class 18, goods made of these materials (leather and imitations of leather), namely; attache cases; should be understood as attache cases made of leather and imitations of leather.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 18
Leather and imitations of leather; wallets; purses; wallets and handbags; shopping bags; school bags; animal skins, hides; travelling bags; umbrellas and parasols are identically contained in both lists of goods.
The contested key wallets; card wallets are included in the broad category of the opponent’s wallets. Therefore, they are identical.
The contested clutch purses are included in the broad category of the opponent’s purses. Therefore, they are identical.
The contested toilet bags; kit bags; backpacks, book bags, sports bags, bum bags are included in the broad category of the opponent’s bags. Therefore, they are identical.
The contested attache cases (made of leather and imitations of leather); carrying cases; briefcase-type portfolios are various types of luggage for transporting clothes, personal belongings and/or documents, papers, etc. They are considered highly similar to the opponent’s suitcases and bags, as these goods have the same purpose and may have the same nature and method of use. Moreover, they coincide in their end users and distribution channels.
The contested boxes made of leather are multi-purpose storage containers made of leather. They are considered similar to the opponent’s bags (envelopes, pouches) of leather, for packaging, as these goods may have the same purpose and method of use. Moreover, they can coincide in their end users and distribution channels.
The contested trunks are large strong cases or boxes used for storing things or for taking on a journey. They are similar to the opponent’s bags, as these goods have the same purpose. Moreover, they can coincide in their end users and distribution channels.
The contested cases for keys; hat boxes of leather or imitation leather are containers and cases specially designed for the storage of specific items, such as keys and hats. Their purpose is similar to the opponent’s bags (storage and transport); these goods are commonly produced by the same manufacturers and have the same end users. In addition, they are typically found in the same shops. Consequently, they are similar.
The contested baby carrying bags; backpacks for carrying babies; infant carriers worn on the body are types of carrying equipment specially designed for carrying babies. They are considered similar to a low degree to the opponent’s clothing, since the latter includes clothing articles for babies, which are sold in the same retail outlets (baby-carrying equipment is usually sold in shops that sell clothing for babies), target the same public and can be expected to be produced and marketed by the same manufacturers as the contested goods.
According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the term goods made of leather and imitations of leather does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors.
The opponent’s goods made of these materials (leather and imitations of leather) and not included in other classes and the contested whips, harness and saddlery may coincide in their nature, as whips, harness and saddlery are usually made of leather or imitations thereof. The purpose, in the broadest sense, of these goods may also be the same, in that they are goods for animals, as the opponent’s goods made of leather and imitations of leather may include leather leashes and collars. To that extent, these goods are similar to a low degree. However, in the absence of an express limitation by the opponent to clarify its goods, it cannot be assumed that they coincide in other criteria.
The contested walking sticks are long wooden sticks that a person can lean on while walking. Their nature and main purpose are different from the natures and purposes of the opponent’s goods and services in Classes 18, 25 and 35. They have different manufacturers, publics and distribution channels. Furthermore, they are neither in competition nor complementary. The contested walking sticks are therefore dissimilar to the opponent’s goods and services.
Contrary to the opponent’s allegations, the fact that some umbrellas may have an additional function and may be used for support during walking or as a weapon does not change the main purpose of an umbrella, which is to protect the user from rain. This purpose is obviously different from the main purpose of a walking stick.
Contested goods in Class 25
Footwear, headgear are identically contained in both lists of goods.
The contested clothing (except underclothing, beachwear and swimwear, leisure wear, nightwear) is included in the broad category of the opponent’s clothing. Therefore, they are identical.
Contested services in Class 35
Business management; business administration are identically contained in both lists of services.
The contested advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.
When comparing the opponent’s business management to advertising it should be noted that advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is ‘to reinforce the [business] position in the market’ and the purpose of business management services is to help a business in ‘acquiring, developing and expanding market share’. There is not a clear-cut difference between ‘reinforcing a business position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice regarding how to efficiently run a business may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a part of their services and therefore the relevant public may believe that these two services have the same professional origin. Consequently, these services are similar to a low degree (22/11/2011, R 2163/2010-1, INNOGAME / InnoGames, § 13-17).
The contested office functions are the internal day-to-day operations of an organisation including the administration and support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.
The opponent’s business administration services are intended to help companies with the performance of business operations and therefore with the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently to direct activities towards common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation; they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.
Therefore, the contested office functions and the opponent’s business administration are similar, as they may have the same purpose, origin and relevant public.
The contested the bringing together, for the benefit of others, clothing, footwear, headgear (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes includes, as a broader category, or overlaps with the opponent’s retailing of clothing, footwear and headgear. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
As regards retailing of goods that are not identical, retail services relating to specific goods are considered similar to retail services relating to other specific goods, independently of whether or not there is similarity between the goods in question. The services under comparison have the same nature, as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Furthermore, depending on whether or not the goods in question are commonly retailed in the same outlets, they may coincide in their relevant public and distribution channels, in which case they must be considered highly similar.
Therefore, the contested the bringing together, for the benefit of others, of leather and imitations of leather, and goods made of these materials, namely, attache cases, carrying cases, briefcase-type portfolios, cases for keys, key wallets, wallets, card wallets, purses, clutch purses, toilet bags, kit bags, baby carrying bags; the bringing together, for the benefit of others, of backpacks, book bags, sports bags, bum bags, wallets and handbags, shopping bags, school bags, backpacks for carrying babies, infant carriers worn on the body, boxes made of leather; the bringing together, for the benefit of others, of hat boxes of leather or imitation leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are at least similar to the opponent’s retailing of clothing, footwear and headgear.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar to various degrees and the retail services are directed at the public at large. The degree of attention is average.
The other services at issue (advertising; business management; business administration; office functions) are specialised services directed at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on their price, frequency of purchase and influence on the functioning of important aspects of a business.
- The signs
NÜMPH | |
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.
Due to the specific pronunciation rules of German, in the words ‘NÜMPH’ and ‘NYMPH’, the German-speaking public will pronounce the sounds of the letters ‘Ü’ and ‘Y’ identically. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.
The earlier mark is a word mark composed of one element, ‘NÜMPH’. This element has no meaning for the German-speaking public and is therefore distinctive to an average degree.
The contested sign is a figurative trade mark composed of the verbal elements ‘NYMPH’ and ‘UNIQUE DESIGN’ and a figurative element of an upper case letter ‘N’ inside a circle, under which is a thin horizontal line. The verbal element ‘NYMPH’, written in relatively large standard black upper case characters, is placed below the letter ‘N’ inside the circle. The expression ‘UNIQUE DESIGN’, written underneath the element ‘NYMPH’ in standard upper case letters, is much smaller than and is almost not perceptible in comparison with the verbal element ‘NYMPH’ and the device of the letter ‘N’ inside the circle. Therefore, the verbal element ‘NYMPH’ and the letter ‘N’ inside the circle are the co-dominant elements of the contested sign, as they are the most eye-catching.
The verbal element ‘NYMPH’ of the contested sign, meaning in English ‘a spirit of nature envisaged as a beautiful maiden’, has no meaning as such in German. However, it closely resembles its German equivalent, ‘die Nymphe’, and will be perceived as an allusion to this mythical creature. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
The word ‘DESIGN’ has the same meaning in German as it has in English, namely ‘to work out the structure or form of (something), as by making a sketch, outline, pattern, or plans; to plan and prepare (something), and decide on all the details of it’. Therefore, it is weak or devoid of any distinctive character in relation to the relevant goods and services, as it may be perceived as a laudatory message or information about their nature. The verbal element ‘UNIQUE’ is meaningless for the German-speaking public and therefore has an average degree of distinctiveness. However, due to the relatively small size of the expression ‘UNIQUE DESIGN’ in comparison with other parts of the contested sign, it has a very limited impact on the perception of the sign by the relevant consumers.
The horizontal line has a merely decorative character and, consequently, no distinctive character.
Visually, the signs coincide in the sequence of letters ‘N*MPH’. However, they differ in the second letter of the earlier trade mark and of the co-dominant verbal element of the contested sign, namely ‘Ü’ versus ‘Y’. The signs also differ in the verbal elements ‘UNIQUE DESIGN’, the horizontal line and the device of the letter ‘N’ inside the circle of the contested sign, which have no counterparts in the earlier trade mark. These elements nevertheless have a limited impact on the perception of the sign. The verbal elements ‘UNIQUE DESIGN’, regardless of their degree of distinctive character, are very small and almost not perceptible in comparison with the other parts of the contested sign. The horizontal line is purely decorative, with no distinctive character, and the letter ‘N’ inside the circle will be perceived as a reference to and an emphasis of the verbal element ‘NYMPH’.
Therefore, the signs are visually highly similar.
Aurally, since it has been confirmed by case-law that consumers generally refer to only the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and that they tend to shorten marks containing several words, it is highly likely that the contested sign will be referred to verbally by only the verbal element ‘NYMPH’. The earlier trade mark, ‘NÜMPH’, containing an umlaut over the ‘U’, will be pronounced identically to the contested sign by the relevant public.
Therefore, the signs are aurally identical.
Conceptually, the public in the relevant territory will perceive the allusion to a nymph and the meaning of ‘DESIGN’ in the contested sign. The other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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.
- Global assessment, other arguments and conclusion
The goods and services are partly identical, partly similar to various degrees and partly dissimilar. The degree of attention of the relevant public varies from average to high. The signs are visually highly similar, aurally identical and conceptually not similar.
The earlier mark is formed of a single verbal element, which differs visually in only one letter from the essential element of the contested sign. Moreover, the earlier mark and this co-dominant verbal element of the contested sign are pronounced identically and all other differences between the signs can be attributed to elements in the contested sign that have a limited impact, for the reasons explained above in section c) of this decision. Even the allusion to a nymph in the contested sign, which may be perceived when consumers are confronted with the sign visually, does not outweigh the aural identity between the signs.
Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
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). Consequently, taking into account the high degree of similarity between the signs, the Opposition Division is of the opinion that there is also a likelihood of confusion in relation to the goods and services that are similar to a low degree.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods 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
Adriana VAN ROODEN | Anna ZIÓŁKOWSKA | Begoña URIARTE VALIENTE |
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.