1st AMERICAN | Decision 1642258 – Retail Royalty Company v. FASHION ENERGY S.r.l.

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OPPOSITION No B 1 642 258

Retail Royalty Company, 101 Convention Center Drive Suite 850, Las Vegas, Nevada 89109, United States of America (opponent), represented by D Young & Co LLP, 120 Holborn, London  EC1N 2DY, United Kingdom (professional representative)

a g a i n s t

Fashion Energy S.r.l., Via Zezon 4, 20124 Milan, Italy (applicant), represented by Ipser S.r.l., Via Macedonio Melloni 32, 20129 Milan, Italy (professional representative).

On 10/02/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 642 258 is upheld for all the contested goods.

2.        European Union trade mark application No 8 622 078 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 8 622 078. The opposition is based on European Union trade mark registration No 5 066 113. 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.

  1. The goods and services

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

Class 25:        Clothing and accessories, namely, blazers, vests, sweaters, turtleneck sweaters, sweater coats, skirts, skorts (combination skirt and shorts), pants, jeans, shorts, shirts, t-shirts, sport shirts, pull-overs, overalls, blouses, shortalls, polo shirts, rugby shirts, halters, halter tops, sweatshirts, sweatpants, and fleecewear; swimwear; beach cover-ups; sleepwear; pajamas; robes; underwear, namely bras, panties, boxer shorts, shell bra tanks, and undershirts; outerwear, namely, jackets, vests, parkas, coats, pea coats, ski pants and ski jackets, 3-in-1 system coats, snowboarding pants and jackets, anoraks, gloves, ear muffs, scarves and mittens; ties; belts; footwear, namely, socks, shoes, slippers, leather boots, rubber boots, insoles, sandals, flipflops, sneakers, clogs and slides, and hosiery; athletic footwear, namely, athletic shoes, trail and hiking shoes and boots, canvas shoes, and rollerskates, headwear, namely, hats, hoods, caps, baseball caps, visors, sun visors, headbands, babushkas, head and wrist sweatbands, headscarves, berets.

Class 35:        Retail store services, electronic retail commerce over the Internet/worldwide web, catalogue retail sales, mail order and phone order retail services, all for a wide range of fragrances, after-shave lotions, non-medicated lip balm, bath oil, bath powder, non-medicated bath salts, bubble bath, beauty masks, body cream, body oil, body powder, cologne, perfume, toilet water, cosmetic pencils, hand cream, eye cream, night cream, shaving cream, skin cleansing cream, skin cream, deodorant soap, personal deodorants, antiperspirants, and combination deodorants/antiperspirants, emery boards, essential oils for personal use, eye makeup, eye makeup remover, eye pencils, eye shadow, eyebrow pencils, eyeliners, face powder, facial scrubs, foundation makeup, bath gel, shaving gel, shower gel, lip gloss, lipstick, hair conditioners, hair gel, hair rinses, hair spray, skin lotion, facial lotion, body lotion, makeup, facial makeup, mascara, massage oil, skin moisturizer, nail enamel, nail polish, rouge, sachets, hair shampoo, shaving balm, shaving lotion, skin cleansing lotion, skin soap, skin toners, liquid soaps for hand, face, and body, and cosmetics, including compacts candles, sunglasses, jewellery and wristwatches, stationery, posters, pictorial, art and colour prints, calendars and travel diaries, pens, pencils, portfolios, notepads, greeting cards, and note cards, including wallets, handbags, purses, shoulder bags, and luggage, school bags, backpacks, daypacks, waist packs, duffel bags, general purpose sport bags, laundry bags, and portfolios, and umbrellas, and a wide range of wearing apparel and clothing accesories, including clothing, headwear and footwear, athletic bags, all-purpose athletic bags, all-purpose sports bags, barrel bags, beach bags, book bags, clutch bags, gym bags, leather shopping bags, tote bags, travel bags, billfolds, briefcases, business card cases, calling card cases, credit card cases, attaché cases, document cases, key cases, overnight cases, passport cases, passport wallets, passport holders, credit card holders, cosmetic cases sold empty, toiletry cases sold empty, vanity cases sold empty, change purses, coin purses, drawstring pouches, leather key fobs, knapsacks, luggage, luggage tags, pocketbooks, briefcase-type portfolios, purses, rucksacks, satchels, suitcases, and wallets.

The contested goods are the following:

Class 9:        Spectacles.

Class 24:        Household textiles and linen.

Class 25:        Clothing, footwear, headgear.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 9

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested spectacles are similar to a low degree to the opponent’s retail store services, all for a wide range of sunglasses.

Contested goods in Class 24

The contested household textiles and linen are types of cloth or fabric for use in the home, such as blankets or towels. In the case of towels, their main function is to absorb moisture from wet skin. The earlier mark also covers, inter alia, robes in Class 25. These goods include also bathrobes, which are loose, often absorbent robes worn before and after bathing or as a dressing gown. These goods have the same purpose and nature as the contested goods. Also, they can coincide in producer, relevant public and distribution channels. Furthermore, they are in competition. For all these reasons, they are deemed to be highly similar.

Contested goods in Class 25

The contested clothing, footwear, headgear include, respectively, as broader categories, the opponent’s blazers, shoes and hats. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

  1. 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 found to be identical or similar to various degrees are directed at the public at large. The degree of attention is expected to be average.

  1. The signs

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http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=66724722&key=046eb87b0a840803398a1cf1a190d64f

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of a pictorial representation of a bird (probably intended to be an eagle) spreading its wings upwards and with the beak open. Also, the claws are open in the typical position of a bird of prey.

The contested sign is a figurative composite mark with the number and word element ‘1st AMERICAN’ reproduced in white capital letters on a black rectangle, above a figurative element consisting of a pictorial representation which can be described in the same way as the earlier mark, namely the image of a stylized bird, most likely an eagle, spreading its wings upwards and with the beak open. Also in this case the claws are open in the typical position of a bird of prey.

While the element consisting of a pictorial representation of a bird of the contested sign has an average degree of distinctiveness, the element ‘AMERICAN’ of the contested sign will be associated with the concept of ‘relating to the United States or the continents of America’. This element describes a possible characteristic of the goods, namely their origin. This element is deemed to be weak for all the goods.

Moreover, the component ‘1st’, also contained in the contested mark, will be likely to be associated with something ‘that is before all others’ (foremost in position, rank, or importance). This abbreviation is often used to indicate that something is of premium quality. Bearing this in mind, this element is laudatory as it merely alludes to some positive characteristics and attributes of the goods at hand, namely that they are the best on the market in terms of quality, etc. Therefore, it is considered that this element is not particularly distinctive.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their figurative element, namely the depiction of a bird of prey, the features and characteristics of which are highly similar.

However, they differ in the additional elements of the contested sign, which as seen above are weak or not particularly distinctive elements.

Therefore, the signs are visually highly similar.

Aurally, account must be taken on the fact that purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, the distinctive element of the contested sign coincides with the earlier mark. As regards the additional verbal elements of the contested sign, they are deemed to be weak or not particularly distinctive. For these reasons, the Opposition Division deems that the marks are conceptually highly similar.

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

  1. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

  1. Global assessment, other arguments and conclusion

The goods and services covered by the trade marks in dispute have been found partly identical, partly highly similar and partly similar to a low degree. They are directed at the public at large and the degree of attention is expected to be average.

As regards the signs, they are considered to be highly similar both from a visual and an aural perspective due to the presence of a figurative element, namely the depiction of a stylized bird of prey, the characteristics of which almost wholly coincide from a graphic point of view. In fact, size, proportion and features of this element are almost identical and together recall the same semantic content, not only from a general perspective (a bird of prey, most likely an eagle) but also as regards the details (a bird spreading its wings upwards, with the beak and the claws open).

It is true that the contested sign contains additional elements, namely the the numerical/verbal elements ‘1st AMERICAN’ reproduced in white capital letters on a black rectangle. However, as already explained above in section c) of the present decision, for the English-speaking part of the relevant public on which the attention has been focused, these elements are weak or not particularly distinctive. The consumer is more likely to consider that a weak or not particularly distinctive element of a mark is not being used to identify a particular undertaking, and thus to distinguish goods or services from those of other undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Furthermore, 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 all the foregoing, it is the opinion of the Opposition Division that in spite of the differences in the additional elements of the contested sign, there is a likelihood of confusion on the part of the English-speaking part of the public because the visual coincidences are overwhelming and the marks conceptually coincide in the only element that constitutes the earlier mark and the distinctive element of the contested sign. 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 application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 066 113. It follows that the contested trade mark must be rejected for all the contested 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.

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) 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

Orsola LAMBERTI

Andrea VALISA

Natascha GALPERIN

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.

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