R SARTORIA ROSSI | Decision 2741026
Date Published: Sep 25, 2017
OPPOSITION No B 2 741 026
K & L Ruppert Stiftung & Co. Handels-KG, Paradeisstr. 67, 82362 Weilheim, Germany (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Widenmayerstraße 47, 80538 Munich, Germany (professional representative)
a g a i n s t
Sartoria Rossi S.R.L., Via del Molino, 2/B, 52047 Marciano della Chiana (Arezzo), Italy (holder)
On 31/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 741 026 is upheld for all the contested goods.
2. International registration No 1 278 110 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of international trade mark registration designating the European Union No 1 278 110 . The opposition is based on Article 8(1)(b) EUTMR in relation to the following earlier trade mark registrations:
1) | European Union trade mark No 12 817 102 | |
2) | European Union trade mark No 8 306 631 |
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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the earlier European Union trade mark No 12 817 102.
- The goods
The goods on which the opposition is based are the following:
Class 18: Belts, bumbags, purses, wallets; Trunks, travelling bags and vanity cases, bath bags, handbags, rucksacks, shoe bags, sports bags; Umbrellas, parasols, walking sticks and trekking poles, in particular telescopic walking sticks and trekking poles; Sporting sticks, including skiing and trekking poles.
Class 25: Outer and underclothing, gloves, collar protectors, scarves, neckties, footwear, stockings, tights, headgear; Shoes, in particular sports shoes.
The contested goods are the following:
Class 25: Clothing of leather; bermuda shorts; braces for clothing [suspenders]; footwear; socks and stockings; shirts; headgear; coats; cardigans; neckties; sweat shirts; jackets [clothing]; heavy jackets; skirts; blousons; jeans; hosiery; sweaters; trousers; parkas; polo shirts; pullovers; overcoats; trench coats; clothing of imitations of leather; leather belts [clothing]; dresses; suits; chemisettes; vests; gloves [clothing]; mantles; fur stoles; furs [clothing]; skirt suits; scarfs; pocket squares; mackintoshes; short-sleeved T-shirts; long-sleeved T-shirts; undershirts.
Contested goods in Class 25
Footwear; stockings; headgear; neckties; gloves [clothing]; scarfs are identically contained in both lists of goods (including synonyms).
The contested clothing of leather; bermuda shorts; braces for clothing [suspenders]; socks; shirts; coats; cardigans; sweat shirts; jackets [clothing]; heavy jackets; skirts; blousons; jeans; hosiery; sweaters; trousers; parkas; polo shirts; pullovers; overcoats; trench coats; clothing of imitations of leather; leather belts [clothing]; dresses; suits; chemisettes; vests; mantles; fur stoles; furs [clothing]; skirt suits; pocket squares; mackintoshes; short-sleeved T-shirts; long-sleeved T-shirts; undershirts are included in the broad categories of, or overlap with, the opponent’s outer and underclothing. Therefore, they are identical.
- 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 average.
- The signs
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested international registration.
The verbal elements ‘ROSSI’ and ‘SARTORIA’ are meaningful in certain territories, for example, in those countries where Italian is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.
The earlier mark is composed of a star at the left side and the word ‘ROSSI’ at the right side. The device of the star is a less distinctive figurative element of a purely decorative nature, which is commonly used to indicate a special quality for whatever kind of good or service. The verbal element ‘ROSSI’ is a typical surname in Italy and will be immediately recognized as such. It is more distinctive than the figurative element. The earlier mark has no elements that could be considered clearly more dominant than other elements.
The contested sign is composed of the letter ‘R’ in the upper centre part in a big ornamental typeface and, below it, the words ‘SARTORIA ROSSI’ in standard, smaller typeface. The contested sign has no elements that could be considered clearly more dominant (eye-catching) than other elements. The Italian word ‘SARTORIA’ refers to a dressmaker’s shop, so that it is weak for the relevant goods, which are different types of clothing and footwear. The word ‘ROSSI’ will be recognized as a typical Italian surname. Overall, the words ‘SARTORIA ROSSI’ make references to a tailor’s shop named ‘ROSSI’. The ornate letter ‘R’ which is placed above these words, will only be perceived as the reference to the word ‘ROSSI’ and will not be pronounced on its own.
Visually, the signs coincide in the distinctive word ‘ROSSI’. The figurative element of the earlier mark and the verbal element ‘SARTORIA’ of the contested mark are weak and will not be able to differentiate the signs. Although the stylized letter ‘R’ on top of the contested sign will not go unnoticed, it just repeats the first letter of the distinctive verbal element ‘ROSSI’. Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‛ROSSI’, present identically in both signs. The pronunciation differs in the sound of the non-distinctive word ‛SARTORIA’ of the contested mark, which has no counterpart in the earlier sign. The letter ‘R’ of the contested sign will probably not be pronounced. The device of a star has no bearing on the phonetic assessment. Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks: the contested mark ‘SARTORIA ROSSI’ makes references to a tailor’s shop named ‘ROSSI’ while the earlier mark refers to the Italian surname ‘ROSSI’. The letter ‘R’ in the contested mark refers to the word ‘ROSSI’ and does not introduce any concept. The device of a star of the earlier sign is a laudatory and weak element. As the signs will be associated with a similar meaning, the signs are similar to an average degree.
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 the weak star device in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods of the opposing signs are identical. The level of attention of the relevant public is average. The distinctiveness of the earlier mark is normal.
The signs are visually, aurally and conceptually similar insofar they contain the distinctive word ‘ROSSI’. The additional word ‘SARTORIA’ of the contested sign is weak in relation to the relevant goods, namely clothing and footwear. The ornamental letter ‘R’ of the contested sign will be perceived as the abbreviation of the word ‘ROSSI’ in the contested mark. The additional star device of the earlier mark is laudatory and also weak. Thus, the signs coincide in their distinctive elements and differ only in weak or additional elements.
Even when taking into consideration that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff and the choice of the item of clothing is generally made visually, so that the visual aspect plays a greater role in the global assessment of the likelihood of confusion, the differences in the graphic representation (typefaces in both signs, device of a star in the earlier mark, ornamental representation of the letter ‘R’ in the contested mark) are not sufficient to tell the signs apart.
Considering all the above, there is a likelihood of confusion on the part of the Italian-speaking part of the public. 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 international registration.
Therefore, the opposition is well founded on the basis of the European Union trade mark No 12 817 102. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier European Union trade mark No 12 817 102 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Octavio MONGE GONZALVO | Julia SCHRADER | Sigrid DICKMANNS |
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.