OPPOSITION No B 2 698 903

Kaymans Apparel Limited, 135 New John Street, Aston, Birmingham B6 4LD, United Kingdom (opponent), represented by Fairfield IP Limited, 1 South Lynn Gardens, London Road, Shipston-on-Stour, Warwickshire CV36 4ER, United Kingdom (professional representative)

a g a i n s t

Delta Trading International (Pvt) Ltd, No. 32B, Nagahamulla Road, Kolonnawa, Wellampitiya 10600, Democratic Socialist Republic of Sri Lanka (applicant), represented by Nucleus IP Limited, 10 St Bride Street, London EC4A 4AD, United Kingdom (professional representative).

On 17/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 698 903 is upheld for all the contested goods.

2.        European Union trade mark application No 15 290 539 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 290 539. The opposition is based on European Union trade mark registration No 14 643 861. 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

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

Class 25:        Clothing; Footwear; Headgear.

The contested goods are the following:

Class 25:        Men’s clothing.

The contested men’s clothing is included in the broad category of the opponent’s clothing. 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 considered average.

3. The signs

HOUSE OF CAVANI
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).

From the perspective of the English-speaking part of the public in the relevant territory, the earlier mark’s element consisting of the words ‘HOUSE OF’ is part of an expression that is commonly used, in trade, to refer to commercial establishments and firms. Therefore, it lacks any distinctiveness. Turning to the element ‘CAVANI’, it is noted that, while for part of the relevant public it lacks any clear meaning, another part of the public will perceive it as a surname of a foreign, probably Italian, origin. Be that as it may, this element is fanciful and enjoys an average degree of distinctiveness for the goods at issue.

The contested figurative sign comprises a stylised depiction of the word ‘CAVANI’, in which both graphemes ‘A’ lack the horizontal bars and the grapheme ‘V’ vaguely resembles a human torso with arms in the air. For at least part of the relevant public, the word ‘CAVANI’ will convey the same semantic content as that underlying the element ‘CAVANI’ in the earlier mark, without this impression being altered by the contested sign’s figurative elements, which will be perceived as mere embellishments of the graphemes. It follows that, in the contested sign, too, this element has an average degree of distinctiveness.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, the words ‘I’M ALL IN’ and the line that separates them from the word ‘CAVANI’ are barely perceptible. As these elements are likely to be disregarded by the relevant public, they will not be taken into consideration.

In view of the above, the contested sign has only one element that has to be taken into account for the present assessment, namely the stylised word ‘CAVANI’. In contrast, the earlier mark is a word mark, which, by definition, has no element that could be more visually eye-catching than others. Consequently, neither of the signs has any element that could be considered more dominant than other elements.

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 public for which the differing element in the earlier mark is non-distinctive, and that perceives the word ‘CAVANI’ as a foreign surname in both signs.

Conceptually, the earlier mark as a whole refers to, inter alia, the company/firm of a person called Cavani. The contested sign will be associated with the same proper name. Given the very limited impact of the differentiating element, ‘HOUSE OF’, the signs are conceptually highly similar.

Visually, the signs coincide in the word ‘CAVANI’, albeit depicted in a stylised manner in the contested sign. In that regard, it has to be kept in mind that, when signs consist 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).

In addition, the earlier mark differs in its element ‘HOUSE OF’. However, account must be taken of the very limited impact of that element on the overall impression produced by the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the word ‘CAVANI’, present identically in both signs. Although the pronunciation of the earlier mark differs in the sounds corresponding to the words ‘HOUSE OF’, this element has a very limited impact on the overall impression produced by the mark.

It is, therefore, considered that the signs are aurally 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.

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 covered are from the same or economically linked undertakings.

The contested goods are identical to the opponent’s goods and the relevant public’s degree of attention is average.

The signs are conceptually and aurally highly similar and visually similar to an average degree, as they have in common the element ‘CAVANI’. Aside from the stylisation of the contested sign, the differing element between the signs is the earlier mark’s non-distinctive element, ‘HOUSE OF’. As shown in detail in section c) of this decision, this difference is insufficient to enable the relevant public to safely distinguish between the signs in the context of identical goods.

In the fashion industry, it is common practice to create product lines and denote them with trade marks derived from the main brand. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a graphically stylised variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public that would perceive the earlier mark as a reference to a surname (probably Italian). 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 14 643 861. 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

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Zuzanna STOJKOWICZ

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.