OPPOSITION No B 2 432 394

Eva Pasching, Wagengasse Süd 12, 3124 Oberwölbling, Austria (opponent), represented by Urbanek Lind Schmied Reisch Rechtsanwälte OG, Domgasse 2, 3100 St. Pölten, Austria (professional representative)

a g a i n s t

Home Focus Development Limited, Trustnet Chambers Limited, P.O. Box 3444, Road Town, Tortola, British Virgin Islands (applicant), represented by Dracco Candy S.L., Francesc Cotoli, Via Augusta, 13-15, Oficina. 211, 08006 Barcelona, Spain (employee representative).

On 21/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 432 394 is upheld for all the contested goods, namely

Class 25: Clothing; clothing for children; babies' clothing; bibs, not of paper; underwear; underclothing; sleepwear and pajamas; knitwear [clothing]; outerclothing; coats; overcoats; parkas; jackets [clothing]; jumpers; pullovers; shirts; sports jerseys; suits; bathing suits; bath robes; tee-shirts; uniforms; vests; camisoles; suspenders; sportswear; jerseys; clothing for gymnastics; wristbands; swimsuits; wet suits; beach clothes; waterproof clothing; working sleeves; trousers; pants; aprons; masquerade costumes; bandanas [neckerchiefs]; belts [clothing]; gloves; mittens; neckwear; neckties; cravats; bowties; scarfs; shawls; slips; footwear; socks and stockings; pantyhoses; garter belts; shoes; sports shoes; slippers; sandals; beach shoes; bath sandals; bath slippers; boots; boots for sports; ski boots; headgear; headbands; kerchiefs [clothing]; hats; swimming caps; sport caps; cap [headwear]; shower caps; sun visors; berets; ear muffs; eye masks; braces for clothing [suspenders].

2. Community trade mark application No 13 029 913 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 13 029 913, namely against all the goods in Class 25. The opposition is based on Austrian trade mark registration No 179 075. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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

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

Class 25: Clothing, shoes and headgear.

The contested goods are the following:

Class 25: Clothing; clothing for children; babies' clothing; bibs, not of paper; underwear; underclothing; sleepwear and pajamas; knitwear [clothing]; outerclothing; coats; overcoats; parkas; jackets [clothing]; jumpers; pullovers; shirts; sports jerseys; suits; bathing suits; bath robes; tee-shirts; uniforms; vests; camisoles; suspenders; sportswear; jerseys; clothing for gymnastics; wristbands; swimsuits; wet suits; beach clothes; waterproof clothing; working sleeves; trousers; pants; aprons; masquerade costumes; bandanas [neckerchiefs]; belts [clothing]; gloves; mittens; neckwear; neckties; cravats; bowties; scarfs; shawls; slips; footwear; socks and stockings; pantyhoses; garter belts; shoes; sports shoes; slippers; sandals; beach shoes; bath sandals; bath slippers; boots; boots for sports; ski boots; headgear; headbands; kerchiefs [clothing]; hats; swimming caps; sport caps; cap [headwear]; shower caps; sun visors; berets; ear muffs; eye masks; braces for clothing [suspenders].

The contested goods clothing; footwear; headgear are identically contained in both lists of goods.

The contested goods clothing for children; babies' clothing; bibs, not of paper; underwear; underclothing; sleepwear and pajamas; knitwear [clothing]; outerclothing; coats; overcoats; parkas; jackets [clothing]; jumpers; pullovers; shirts; sports jerseys; suits; bathing suits; bath robes; tee-shirts; uniforms; vests; camisoles; suspenders; jerseys; clothing for gymnastics; wristbands; swimsuits; wet suits; beach clothes; waterproof clothing; working sleeves; trousers; pants; aprons; masquerade costumes; bandanas [neckerchiefs]; belts [clothing]; gloves; mittens; neckwear; neckties; cravats; bowties; scarfs; shawls; slips; socks and stockings; pantyhoses; garter belts; kerchiefs [clothing]; eye masks; braces for clothing [suspenders] are included in the broad category of the opponent’s clothing. Therefore, they are considered identical.

The contested shoes; sports shoes; slippers; sandals; beach shoes; bath sandals; bath slippers; boots; boots for sports; ski boots are included in the broad category of the opponent’s footwear. Therefore, they are considered identical.

The contested headbands; hats; swimming caps; sport caps; cap [headwear]; shower caps; sun visors; berets; ear muffs are included in the broad category of the opponent’s headgear. Therefore, they are considered identical.

The contested sportswear consists in goods which include, in particular, clothing. Therefore, they overlap with the opponent’s goods clothing and are considered identical.

2. The signs

FLORELLA	Florelia
Earlier trade mark	Contested sign

The relevant territory is Austria.

Visually, the signs are similar to the extent that they coincide in the letters ‘FLOREL*A’ placed in the same order, the only difference being in the second-to-last letter of the signs, namely ‘L’ for the earlier mark and ‘I’ for the contested sign. Both signs are word marks and, thus, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the signs are represented in lower, upper or title case letters.

Aurally, the pronunciation of the signs coincides in the sound of the letters /FLOREL*A/ present identically in both signs, and to that extent the signs are aurally similar. The signs also coincide to a large extent in the sound of the letters ‘LL’ of the earlier right and ‘L’ of the contested sign, the letters ‘LL’ at most being a little bit more stressed when pronounced than the letter ‘L’. The pronunciation of the signs differs in the sound of the letter /I/ of the contested sign and, as previously mentioned to a lesser extent, in the sound of the second /L/ of the earlier mark.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

It is however feasible to think that a part of the relevant public will consider the verbal sequence ‘FLOR-’ of the signs as an allusion to the concept of ‘flower’, since words such as ‘Flora’, ‘floral’ exist in German, all relating to flowers. Therefore, for this part of the public, the signs are similar to the extent that they coincide in the concept conveyed by the element ‘FLOR-’, present in both of them.

Taking into account the abovementioned visual, aural and, for a part of the public, conceptual coincidences, it is considered that the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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. 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.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of

11/11/1997, C-251/95, ‘Sabèl’, paragraph 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. 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 lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C-39/97, ‘Canon’, paragraph 17 et seq.).

The goods have been found to be identical.

The similarity between the signs relates to the fact that they share seven out of eight letters, which have the same positions in both signs. The only difference resides in the second-to-last letter (‘L’ / ‘I’). The aural difference is really confined to the ‘I’ of the contested sign for an important part of the public, since the second ‘L of the earlier mark will be hardly pronounced or even not at all. Moreover, the signs refer to an identical concept for a part of the public. It follows from the above that the signs are considered highly similar and that the only difference of one letter is not enough to counteract the strong similarities.

In addition, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’).

Based on all the foregoing, it is considered that the strong similarities between the signs are sufficient for at least part of the public to believe that the conflicting identical goods come from the same undertaking or economically linked undertakings.

As a consequence, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Austrian trade mark registration No 179 075. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant 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), (6) and (7)(d)(i) CTMIR, 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

Sonia MEHANNEK

Steve HAUSER

Vanessa PAGE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.