Patrizia Bonfanti | Decision 2714544
Date Published: Sep 25, 2017
OPPOSITION No B 2 714 544
Grigorius Holdings SIA, Juglas street 31-8, Riga, 1064, Latvia (opponent)
a g a i n s t
Patrizia Bonfanti, Via Francesco Sforza 42, 56028 San Miniato, Italy (applicant), represented by Italbrevetti S.R.L., Via Salvo D'Acquisto, sn, 56025 Pontedera (PI), Italy (professional representative).
On 28/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 714 544 is partially upheld, namely for the following contested goods:
Class 25: Clothing, footwear, headgear; (clothing); gowns; pinafore dresses; robes; sweat-absorbent underclothing (underwear); motorists' clothing; bath robes; bathing suits; bandanas [neckerchiefs]; underwear; sweat-absorbent underwear; smocks; boas [necklets]; teddies [undergarments]; goloshes; skull caps; footwear; training shoes; stockings; socks; gowns; short-sleeve shirts; shirts; bodices [lingerie]; hats; headgear; hats; top hats; hats (paper -) [clothing]; coats; belts [clothing]; belts (money -) [clothing]; tights; shoulder wraps; collar protectors; collars (clothing); detachable collars; ready-made clothing; bustiers; suits; masquerade costumes; neckties; ascots; bonnets; headbands [clothing]; pocket squares; scarves; detachable collars; jackets [clothing]; stocking suspenders; gymnastic shoes; blousons; skirts; jumper dresses; aprons [clothing]; girdles; gloves [clothing]; ski gloves; mackintoshes; wearing apparel; gymnastic wear; leather (clothing of imitations of -); leather clothing; jerseys (clothing); leg warmers; leggings [trousers]; liveries; knitwear (clothing); jumpers; hosiery; sweaters; muffs [clothing]; skorts; parkas; leather clothing; clothing of imitation leather; pelisses; furs [clothing]; cuffs; ponchos; money belts (clothing); suspenders; sock suspenders; sandals; saris; sarongs; footwear; espadrilles; shawls; sashes for wear; topcoats; outer clothing; underwear; ankle boots; boots; fur stoles; pockets for clothing; togas; tee-shirts; turbans; combinations [clothing]; wooden shoes.
2. European Union trade mark application No 15 087 802 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 087 802 for the figurative mark, namely against all the goods in Class 25. The opposition is based on Latvian trade mark registration No 68 948 for the word mark ‘Bonfanti’. 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 25: Clothing, footwear, headgear; swimwear, lingerie.
The contested goods are the following:
Class 25: Clothing, footwear, headgear; (clothing); gowns; pinafore dresses; robes; non-slipping devices for footwear; sweat-absorbent underclothing (underwear); motorists' clothing; bath robes; bathing suits; bandanas [neckerchiefs]; underwear; sweat-absorbent underwear; smocks; boas [necklets]; teddies [undergarments]; goloshes; skull caps; non-slip devices for footwear; fittings of metal for shoes and boots; welts for footwear; tips for footwear; heelpieces for footwear; footwear; training shoes; stockings; socks; gowns; short-sleeve shirts; shirts; shirt yokes; shirt fronts; bodices [lingerie]; hats; headgear; hats; hat frames (skeletons); top hats; hats (paper -) [clothing]; coats; belts [clothing]; belts (money -) [clothing]; tights; shoulder wraps; collar protectors; collars (clothing); detachable collars; ready-made clothing; bustiers; suits; masquerade costumes; neckties; ascots; bonnets; headbands [clothing]; pocket squares; scarves; detachable collars; jackets [clothing]; stocking suspenders; gymnastic shoes; blousons; skirts; jumper dresses; aprons [clothing]; girdles; gloves [clothing]; ski gloves; welts for footwear; mackintoshes; garment bags; wearing apparel; gymnastic wear; leather (clothing of imitations of -); leather clothing; jerseys (clothing); leg warmers; leggings [trousers]; liveries; knitwear (clothing); jumpers; hosiery; sweaters; muffs [clothing]; skorts; parkas; leather clothing; clothing of imitation leather; pelisses; furs [clothing]; cuffs; ponchos; money belts (clothing); suspenders; sock suspenders; sandals; saris; sarongs; footwear; espadrilles; shawls; sashes for wear; topcoats; outer clothing; underwear; ankle boots; boots; fur stoles; footwear soles; insoles; heels; pockets for clothing; togas; footwear uppers; boot uppers; tee-shirts; turbans; combinations [clothing]; wooden shoes.
As a preliminary remark, it should be pointed out that the opposition is based on the goods clothing, footwear, headgear; swimwear, lingerie and not only on swimwear, lingerie as the applicant stated in its observations. Because the use of the semi-colon and the commas in the opponent’s list of goods serves to separate the items listed.
Clothing, footwear (three times in the applicant’s list), headgear; (clothing) are identically contained in both lists of goods.
The contested gowns; pinafore dresses; robes; sweat-absorbent underclothing (underwear); motorists' clothing; bath robes; bathing suits; bandanas [neckerchiefs]; underwear; sweat-absorbent underwear; smocks; boas [necklets]; teddies [undergarments]; stockings; socks; gowns; short-sleeve shirts; shirts; bodices [lingerie]; coats; belts [clothing]; belts (money -) [clothing]; tights; shoulder wraps; collar protectors; collars (clothing); detachable collars; ready-made clothing; bustiers; suits; masquerade costumes; neckties; ascots; headbands [clothing]; pocket squares; scarves; detachable collars; jackets [clothing]; stocking suspenders; blousons; skirts; jumper dresses; aprons [clothing]; girdles; gloves [clothing]; ski gloves; mackintoshes; wearing apparel; gymnastic wear; leather (clothing of imitations of -); leather clothing; jerseys (clothing); leg warmers; leggings [trousers]; liveries; knitwear (clothing); jumpers; hosiery; sweaters; muffs [clothing]; skorts; parkas; leather clothing; clothing of imitation leather; pelisses; furs [clothing]; cuffs; ponchos; money belts (clothing); suspenders; sock suspenders; saris; sarongs; shawls; sashes for wear; topcoats; outer clothing; underwear; fur stoles; pockets for clothing; togas; tee-shirts; combinations [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested goloshes; training shoes; gymnastic shoes; ankle boots; boots; wooden shoes; sandals; espadrilles; are included in the broad category of the opponent’s footwear. Therefore, they are identical.
The contested skull caps; hats; headgear; hats; top hats; hats (paper -) [clothing]; bonnets; turbans are included in the broad category of the opponent’s headgear. Therefore, they are identical.
The contested shirt yokes; shirt fronts; hat frames (skeletons); garment bags; non-slipping devices for footwear; non-slip devices for footwear; fittings of metal for shoes and boots; welts for footwear; tips for footwear; heelpieces for footwear; welts for footwear; footwear soles; insoles; heels; footwear uppers; boot uppers are considered dissimilar to all the opponent’s goods. This is because they differ in nature and purpose. They target different publics, have different distribution channels and are not usually produced by the same kind of undertakings.
- 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 to be average.
- The signs
Bonfanti | |
Earlier trade mark | Contested sign |
The relevant territory is Latvia.
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 earlier mark is a word mark consisting of the word ‘Bonfanti’ which has no meaning in the relevant territory. It should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof.
The contested sign is a figurative sign composed of the verbal elements ‘Patrizia’ in a slightly stylized font and ‘Bonfanti’ in bold. These elements are likely to be perceived by the relevant public, due to their combination, as a female first name and a surname of foreign, most probably of Italian origin.
The applicant argues that it is likely that the relevant public will pay more attention to, and keeps in mind, the word ‘Patrizia’ because they have already heard this name. However, the Opposition Division considers that family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family link) (01/03/2005, T-185/03, Enzo Fusco, EU:T:2005:73, § 52). Therefore, the applicant’s argument is set aside.
The stylisation of the contested sign has a very limited impact on the consumer’s perception given that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the graphic stylisation of the contested sign has only a limited impact on the consumer’s perception.
In terms of dominance, neither of the signs has any element that could be considered clearly more visually eye-catching than other elements.
Visually, the signs coincide in the distinctive verbal element ‘Bonfanti’ what, in fact, means that the earlier mark is completely included in the contested sign.
The signs differ in the word ‘Patrizia’ of the contested sign. Moreover, the contested sign is also differentiated by its stylisation.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‛BON-FAN-TI’ and it differs in the syllables ‘PA-TRI-ZIA’ of the contested sign, which have no counterparts in the earlier mark.
The fact that the length (number of syllables) is different, as pointed out by the applicant, is not sufficient to conclude that there is no phonetic similarity (17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 48).
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the meanings of the signs and their particular elements given above.
The relevant public is likely to only perceive a concept in the contested sign, as explained above (the concept of a full female name of foreign origin), while the earlier mark has no meaning in the relevant 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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the goods at issue are partly identical and partly dissimilar. They are addressed to the public at large, which will pay an average degree of attention. The earlier mark has a normal degree of distinctiveness.
The signs in dispute are visually and aurally similar to an average degree and conceptually not similar, as explained in detail above in section c) of this decision. The differences between the signs are not sufficient to counteract their similarities, since some of them have a limited impact on the perception of the signs, namely the graphic stylisation. The additional verbal element in the contested sign is not sufficient to safely exclude likelihood of confusion in the present case, for the reasons stated below.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable image.
In the present case, although the public in the relevant territory might detect certain visual and aural differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark configured in a different way depending on the type of goods that it designates. It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is partly well founded on the basis of the opponent’s Latvian trade mark registration No 68 948. It follows that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested goods are dissimilar to the opponent’s goods. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Steve HAUSER | Alexandra APOSTOLAKIS | Benoit VLEMINCQ |
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.