VALERIO | Decision 2706409 - ACTIVEWEAR VALERIO, S.L. v. PELLETTERIA DAVIDE SRL

Date Published: Oct 1, 2017

OPPOSITION No B 2 706 409

Activewear Valerio, S.L., Pescadores, 15 Nave 1, 38108 Los Majuelos - La Laguna, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Pelletteria Davide Srl, Via Principe Umberto, 38, 00185 Roma, Italy (applicant).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 706 409 is partially upheld, namely for the following contested goods:

Class 18: Umbrellas and parasols; luggage, bags, wallets and other carriers

Class 25: Clothing; headgear; hats; footwear.

2.        European Union trade mark application No 15 083 851 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 all the goods of European Union trade mark application No 15 083 851. The opposition is based on, inter alia, European Union trade mark registration No 14 450 514. 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 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 opponent’s European Union trade mark registration No 14 450 514.

1. The goods

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

Class 18: Backpacks; vanity cases, not fitted; shoulder belts; beach bags; duffel bags; carrying cases; trunks and suitcases; card wallets [leatherware]; purses; traveling trunks; haversacks; animal carriers [bags]; leather bags and wallets; key-cases of leather and skins; wallets; travel garment covers; luggage, bags, wallets and other carriers; canvas bags; umbrella covers; briefbags; travelling handbags; bags for sports; evening handbags; travelling sets; key cases of imitation leather; umbrellas and parasols.

Class 24: Towelling [textile]; hooded towels; towels of textile; beach towels; bath linen; bath linen, except clothing; disposable wash cloths; bath towels.

Class 25: Ready-made clothing; headgear; footwear.

The contested goods are the following:

Class 18: Saddlery, whips and animal apparel; sausage skins and imitations thereof; umbrellas and parasols; luggage, bags, wallets and other carriers.

Class 25: Clothing; headgear; hats; footwear.

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

The contested saddlery is equipment for horses, such as saddles and harnesses; whips are instruments used for driving animals; animal apparel is accessories for animals. The nature of these goods is very different from that of the opponent’s goods in Classes 18, 24 and 25. They serve very different purposes. They do not usually have the same retail outlets and they are usually not made by the same manufacturers. These goods are considered dissimilar.

The contested sausage skins and imitations thereof refer to natural casings made of a layer of the animals’ intestine or to artificial casings used in the food industry. These contested goods are usually intended for use in industry rather than for direct purchase by the final consumer. The opponent’s goods are various bags, goods for carrying things, goods of leather and textile, umbrellas, parasols, clothing, footwear and headgear. The goods under comparison differ in their natures, purposes, origins and distribution channels. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar.

Umbrellas and parasols; luggage, bags, wallets and other carriers are identically contained in both lists of goods.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s ready-made clothing. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Headgear and footwear are identically contained in both lists of goods.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

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 found to be identical are directed at the public at large. The degree of attention is average.

3. 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 word ‘VALERIO’ may be perceived by the relevant public as a first name or as a fanciful term.

In the contested sign, the symbol ‘!’ may be seen as the letter ‘i’ turned upside down. Furthermore, it is easier and more natural to read and pronounce the word as ‘VALERIO’ than as ‘VALER!’ and ‘O’, in particular for those who associate ‘VALERIO’ with a first name. Therefore, at least part of the relevant public, will read the verbal element of the contested sign as ‘VALERIO’. For reasons of procedural economy, the comparison of the signs will focus on the part of the public that perceives ‘VALERIO’ in both signs and associates it with a first name.

As ‘VALERIO’ has no meaning in relation to the relevant goods, this element is distinctive.

The black label of the contested sign will be perceived as a decorative background. It is, therefore, less distinctive than the other elements of that sign.

The stylised letter ‘V’ of the earlier mark may be perceived as a reference to the word ‘VALERIO’. The figurative element of the contested sign may be perceived as a depiction of outstretched wings or of a bird or other creature with extended wings. Since these elements have no meaning in relation to the relevant goods, they are distinctive.

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

Visually, the signs coincide in the word ‘VALERIO’. The signs differ in the stylisation of their letters. Despite the graphic depiction, these letters are fairly standard, except one. Furthermore, the signs differ in their colours and in the letter ‘V’ of the earlier mark and the figurative elements of the contested sign.

When a sign consists 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). In addition, the black label of the contested sign is less distinctive than the other elements.

Therefore, the signs are visually similar to an average degree.

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 word ‛VALERIO’, present in both signs. The pronunciation differs in the sound of the letter ‛V’ of the earlier mark, which has no counterpart in the contested sign. However, it is unlikely that this letter will be pronounced, as it will rather be perceived as a reference to the first letter, ‘V’, of the word ‘VALERIO’ below it, and the pronunciation of a double ‘V’ would sound unnatural.

Therefore, the signs are aurally highly similar, if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public under analysis will associate the signs with a similar meaning, conveyed by the distinctive word ‘VALERIO’. The additional letter ‘V’ of the earlier mark may be seen as a reference to this word or as a depiction of the letter ‘V’. The figurative element of the contested sign may be seen as a fanciful element or may be associated with a concept not related to the relevant goods. Therefore, the signs are conceptually similar to at least 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.

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.

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.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly dissimilar.

The signs are visually and conceptually similar to an average degree and aurally highly similar, if not identical.

The degree of distinctiveness of the earlier mark is normal and the degree of attention of the public is average.

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/services covered are from the same or economically linked undertakings.

In view of the above, although there are some differences between the signs at issue, the Opposition Division considers that, given that the signs have in common the word ‘VALERIO’, which plays an independent distinctive role in the contested sign, consumers could be led to believe that the identical goods come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 450 514.

It follows from the above 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. 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.

The opponent has also based its opposition on the following earlier trade marks:

• Spanish trade mark registration No 2 012 045 for the word mark ‘ACTIVE WEAR VALERIO’;

• Spanish trade mark registration No 2 012 384 for the figurative mark ;
• Spanish trade mark registration No 2 074 709 for the word mark ‘VALERIO’;

• Spanish trade mark registration No 2 074 710 for the word mark ‘VALERIO’;
• Spanish trade mark registration No 2 704 915 for the figurative mark .

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Furthermore, the opponent has also based its opposition on the following earlier marks:

• Spanish trade mark registration No 2 074 708 for the word mark ‘VALERIO’, registered for the following goods:

Class 3: Perfumery and cosmetics products.

• Spanish trade mark registration No 2 074 712 for the word mark ‘VALERIO’, registered for the following services:

Class 39: Distribution and storage of all kind of perfumery and cosmetic products, bags, valises, purses and belts, as well as all classes of ready-to-wear clothing, namely t-shirts.

These goods and services are clearly different from the contested saddlery, whips and animal apparel; sausage skins and imitations thereof in Class 18 of the contested trade mark. The opponent’s perfumery and cosmetics products are used to scent the body and cosmetics products are used for beauty care. They differ from the contested goods in their natures, purposes, methods of use, origins and distribution channels. Furthermore, they are neither in competition nor complementary. The opponent’s distribution services refer to the dispersal of goods to consumers and storage refers to the keeping of goods in a particular place for a fee. These services are provided by specialist companies whose business is not the manufacture and sale of the goods that are distributed or stored. The services differ from the goods in their nature, purpose and method of use. They do not have the same distribution channels and are not in competition.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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

Justyna GBYL

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.