PINK CHERRY | Decision 2590266 - NUBE, S.L. v. Pink Cherry GmbH

Date Published: May 22, 2018

OPPOSITION No B 2 590 266

Nube, S.L., Avenida 8 de Agosto, 27, 07800 Ibiza, Spain (opponent), represented by Morgades, Del Rio, Renter, S.L., Calle Rector Ubach, 37-39, bajos 2ª, 08021 Barcelona, Spain (professional representative)

a g a i n s t

Pink Cherry GmbH, Breslauer Str. 8 Room 319-321, 41460 Neuss, Germany (applicant), represented by Ulbrich & Kaminski, Hellweg 2, 44787 Bochum, Germany (professional representative).

On 25/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 590 266 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 911 839. The opposition is based on Spanish trade mark registrations No 2 847 571, No 2 272 957 and No 2 371 814 and the Spanish well-known marks  and . The opponent invoked Article 8(1)(b) and 8(2)(c) 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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Spanish trade marks No 2 847 571 and No 2 371 814

Class 25: Clothing, footwear, hats.

Spanish trade mark No 2 272 957

Class 35: Advertisement, trade management; trade administration; office works, retail sale in shops.

The contested goods and services are the following:

Class 25: Womens’ outerclothing; Clothing; Headgear; Footwear; Jackets [clothing]; Wind resistant jackets; Knit jackets; Weatherproof jackets; Long jackets; Overcoats; Fur coats and jackets; Fur jackets; Sleeveless jackets; Sleeved jackets; Men’s and women’s jackets, coats, trousers, vests; Denim jeans; Denim jackets; Denims [clothing]; Coats of denim; Cardigans; Knit shirts; Knitted caps; Knitwear [clothing]; Caps [headwear]; Skull caps; Leather headwear; Sports headgear [other than helmets]; Neck scarfs [mufflers]; Scarfs; Waist belts; Belts [clothing]; Belts made from imitation leather; String fasteners for haori (haori-himo); Belts made out of cloth; Leather belts [clothing]; Bustle holder bands for obi (obiage); Waist strings for kimonos (koshihimo); Tightening-up strings for kimonos (datejime); Sweaters; Sweat shirts; Sweatjackets; Tracksuit bottoms; Leggings [trousers]; Casual trousers; Culotte skirts; Shorts; Trousers shorts; Shirts; Short-sleeve shirts; Collared shirts; Tunics; Dresses; Evening wear; Women’s ceremonial dresses; Long sleeve pullovers; Skirts; Trousers of leather; Leather jackets; Clothing of leather; Leather shoes.

Class 26: Woggles.

Class 35: Wholesale services in relation to clothing; Wholesale services in relation to printed matter; Retail services connected with the sale of clothing and clothing accessories; Wholesale services in relation to headgear; Retail services in relation to headgear.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. 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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

3. The signs

1) Spanish trade mark No 2 847 571 2) Spanish trade marks No 2 272 957 and No 2 371 814
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Earlier sign 1) is a purely figurative sign depicting a pair of red cherries and two green leaves, placed next to each other symmetrically

Earlier sign 2) depicts a pair of red cherries and two green leaves, as described above, with the word ‘PACHA’ underneath in stylised bold upper case red letters.

The contested mark is a figurative sign composed of a pair of pink cherries, one larger than the other, each surrounded by a black line, and two black leaves of different sizes. The cherries are not completely visible. The word ‘PINK’ is underneath the cherries in different-sized half grey and half black letters on various levels. The word ‘PINK’ is underneath the word ‘CHERRY’ in smaller pink letters.

The Spanish word ‘Pacha’ in the earlier sign is an honorific title used in Muslim countries; the words ‘PINK’ and ‘CHERRY’ have no meaning in the relevant territory.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the marks coincide in the depiction of a pair of cherries. Nevertheless, the depictions of these cherries are very different (as described above). For example, the colours of the cherries are different and the contested mark contains more verbal elements than the earlier signs (and the verbal elements are also different).

Therefore, the marks are visually dissimilar.

Aurally, purely figurative signs are not subject to a phonetic assessment. This applies to sign 1). As one of the signs is purely figurative, it is not possible to compare them aurally. The verbal element of earlier sign 2) will be pronounced as ‘PA-CHA’ and that of the contested mark will be pronounced as ‘PINK CHERRY’ by the Spanish public.

Therefore, earlier sign 2) and the contested sign are aurally dissimilar.

Conceptually, the earlier signs and the contested sign all depict fruit. Therefore, the signs are similar to the extent that they show a pair of cherries. Consequently, the concepts of the conflicting marks are similar to a low degree with respect to their figurative elements.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier marks has enhanced distinctiveness.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from those of another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods and services are assumed to be identical.

The signs are similar to a low degree only from a conceptual point of view in as much as they depict fruits. Nevertheless, the overall impressions of the signs are different. The similarities between the signs in conflict are not sufficient for a likelihood of confusion.

Taking into account the low degree of conceptual similarity of the signs, their different overall impressions, the (at least) average degree of attention of the consumers and the differing word elements of the signs, there is, although the goods and services are considered identical, no likelihood of confusion.

Likewise, even assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive reputation, the outcome of no likelihood of confusion remains the same because of the clearly different overall impressions of the signs. Therefore, it is not necessary to examine the evidence of extensive reputation.

Contrary to the arguments of the opponent, the differences between the signs are sufficient to avoid a likelihood of confusion.

Therefore, the opposition has to be rejected as not well founded under Article 8(1)(b) EUTMR.

For the sake of completeness, it should be noted that the opponent 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).

EARLIER WELL-KNOWN MARK – ARTICLE 8(2)(c) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

The opposition has already been rejected under Article 8(1)(b) EUTMR.

The opponent also bases its opposition on the Spanish well-known marks  and  pursuant to Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR in relation to goods and services in Classes 25, 41 and 43.

According to Article 8(2)(c) EUTMR, for the purposes of Article 8(1) EUTMR, ‘earlier trade marks’ means, inter alia, trade marks which, on the date of application for registration of the European Union trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the European Union trade mark, are well known in a Member State in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention for the Protection of Industrial Property of 20/03/1883. Pursuant to this provision, the countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trade mark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

Therefore, for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR to be applicable, it must be established that (1) the earlier mark was well known in the relevant territory on the date when the contested EUTM application was filed and (2) because of identity or similarity between the contested mark and the earlier well-known mark, and the identity or similarity between the relevant goods and services, there is a likelihood of confusion on the part of the public in the relevant territory.

Article 8(2)(c) EUTMR in general defines the earlier trade mark only ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Accordingly, the grounds for refusal and opposition are those established by Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the earlier trade marks  and , which have already been examined under Article 8(1)(b) EUTMR and where the result was that there was no likelihood of confusion. Therefore, the outcome cannot be more favourable for the opponent under this legal basis. The only possible outcome is that there is no likelihood of confusion in the relevant territory, not even where the opponent relies on the well-known character of its earlier trade marks.

Consequently, the opposition based on Article 8(2)(c) EUTMR must be rejected in relation to these goods and services also.

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

Isabel DE ALFONSETI [

Inés GARCIA LLEDO

Ana MUÑIZ RODRIGUEZ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.