OPPOSITION No B 2 728 999

Planet Mom GmbH, Lochhamer Schlag 10 b, 82166 Gräfelfing, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

Raffaele Palomba, Via Cimaglia 38/B, 80059 Torre Del Greco, Italy (applicant).

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

DECISION:

1.        Opposition No B 2 728 999 is partially upheld, namely for the following contested goods:

Class 25:        Clothing of imitations of leather; Leather clothing; Motorists’ clothing; Cyclists’ clothing; Clothing for gymnastics; Dresses; Robes; Bathrobes; Clothing; Bandanas [neckerchiefs]; Bibs, not of paper; Caps [headwear]; Berets; Underwear; Sweat-absorbent underwear; Boas [necklets]; Teddies [undergarments]; Braces for clothing [suspenders]; Corsets; Galoshes; Skull caps; Footwear; Training shoes; Stockings; Sweat-absorbent stockings; Slippers; Socks; Breeches; Short-sleeve shirts; Shirts; Stuff jackets [clothing]; Bodices [lingerie]; Hats; Top hats; Paper hats [clothing]; Coats; Hoods [clothing]; Footmuffs, not electrically heated; Belts [clothing]; Money belts [clothing]; Tights; Shoulder wraps; Detachable collars; Camisoles; Headgear; Neck scarfs [mufflers]; Layettes [clothing]; Corselets; Suits; Beach clothes; Masquerade costumes; Cravats; Ascots; Bathing caps; Shower caps; Headbands [clothing]; Pocket squares; Scarfs; Gabardines [clothing]; Gaiters; Jackets [clothing]; Fishermen’s jackets; Stocking suspenders; Skirts; Jumper dresses; Aprons [clothing]; Girdles; Gloves [clothing]; Ski gloves; Raincoats; Ready-made clothing; Paper clothing; Knitwear [clothing]; Jerseys [clothing]; Leg warmers; Leggings [trousers]; Liveries; Hosiery; Sweaters; Muffs [clothing]; Maniples; Pelerines; Mantillas; Sleep masks; Miniskirts; Miters [hats]; Pants; Bathing trunks; Vests; Babies’ pants [clothing]; Trousers; Parkas; Pelisses; Furs [clothing]; Chasubles; Pajamas (Am.); Cuffs; Ponchos; Pullovers; Sock suspenders; Brassieres; Sandals; Bath sandals; Saris; Sarongs; Esparto shoes or sandals; Bath shoes; Gymnastic shoes; Beach shoes; Football shoes; Ski boots; Shawls; Underpants; Lace boots; Wimples; Overcoats; Outerclothing; Knee-high stockings; Petticoats; Slips [undergarments]; Half-boots; Boots; Fur stoles; Tee-shirts; Togas; Turbans; Wet suits for water-skiing; Combinations [clothing]; Uniforms; Veils [clothing]; Cap peaks; Wooden shoes.

2.        European Union trade mark application No 15 289 011 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 15 289 011. The opposition is based on European Union trade mark registrations No 9 897 257 and No 13 242 789. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, European Union trade marks No 9 897 257 and No 13 242 789.

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

In the present case the contested trade mark was published on 06/04/2016.

Earlier trade mark No 9 897 257 was registered on 31/01/2014 and earlier trade mark No 13 242 789 was registered on 24/09/2012. Therefore, the request for proof of use is inadmissible.

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 9 897 257.

1. The goods

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

Class 25:        Clothing, including sportswear and leisurewear; Tracksuits, gym shorts and shirts, football shorts and shirts, tennis shorts and shirts, bathing suits and beachwear, swimming trunks and swimsuits, including bikinis; Corsetry, underwear; Children’ s clothing, clothes for newborn babies; Playsuits; Belts; Stockings, tights, socks; Neckties, including ties; Gloves; Headgear, including headbands and sweatbands.

The contested goods are the following:

Class 25:        Clothing of imitations of leather; Leather clothing; Motorists’ clothing; Cyclists’ clothing; Clothing for gymnastics; Dresses; Robes; Bathrobes; Non-slipping devices for footwear; Clothing; Bandanas [neckerchiefs]; Bibs, not of paper; Caps [headwear]; Berets; Underwear; Sweat-absorbent underwear; Boas [necklets]; Teddies [undergarments]; Braces for clothing [suspenders]; Studs for football boots; Corsets; Galoshes; Skull caps; Footwear; Training shoes; Stockings; Sweat-absorbent stockings; Slippers; Socks; Breeches; Short-sleeve shirts; Shirts; Stuff jackets [clothing]; Bodices [lingerie]; Hats; Top hats; Paper hats [clothing]; Coats; Hoods [clothing]; Hat frames [skeletons]; Footmuffs, not electrically heated; Belts [clothing]; Money belts [clothing]; Tights; Shoulder wraps; Detachable collars; Camisoles; Headgear; Neck scarfs [mufflers]; Layettes [clothing]; Corselets; Suits; Beach clothes; Masquerade costumes; Cravats; Ascots; Bathing caps; Shower caps; Headbands [clothing]; Pocket squares; Scarfs; Fittings of metal for footwear; Ready-made linings [parts of clothing]; Gabardines [clothing]; Gaiters; Jackets [clothing]; Fishermen’s jackets; Stocking suspenders; Skirts; Jumper dresses; Aprons [clothing]; Girdles; Gloves [clothing]; Ski gloves; Welts for footwear; Raincoats; Ready-made clothing; Paper clothing; Knitwear [clothing]; Jerseys [clothing]; Leg warmers; Leggings [trousers]; Liveries; Hosiery; Sweaters; Muffs [clothing]; Maniples; Pelerines; Mantillas; Sleep masks; Miniskirts; Miters [hats]; Pants; Bathing trunks; Vests; Babies’ pants [clothing]; Trousers; Parkas; Pelisses; Furs [clothing]; Shirt yokes; Chasubles; Pajamas (Am.); Cuffs; Ponchos; Pullovers; Tips for footwear; Sock suspenders; Brassieres; Heelpieces for footwear; Heelpieces for stockings; Sandals; Bath sandals; Saris; Sarongs; Esparto shoes or sandals; Bath shoes; Gymnastic shoes; Beach shoes; Football shoes; Ski boots; Shawls; Underpants; Lace boots; Wimples; Overcoats; Outerclothing; Dress shields; Knee-high stockings; Petticoats; Slips [undergarments]; Shirt fronts; Half-boots; Boots; Fur stoles; Footwear soles; Insoles; Heels; Pockets for clothing; Tee-shirts; Togas; Footwear uppers; Turbans; Wet suits for water-skiing; Combinations [clothing]; Uniforms; Veils [clothing]; Cap peaks; Wooden shoes.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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).

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.

Clothing; headgear; stockings; underwear; belts [clothing]; tights; gloves [clothing]; socks; bathing trunks are identically contained in both lists of goods (including synonyms).

The contested clothing of imitations of leather; leather clothing; motorists’ clothing; cyclists’ clothing; clothing for gymnastics; dresses; robes; bathrobes; bandanas [neckerchiefs]; bibs, not of paper; sweat-absorbent underwear; boas [necklets]; teddies [undergarments]; braces for clothing [suspenders]; corsets; sweat-absorbent stockings; breeches; short-sleeve shirts; shirts; stuff jackets [clothing]; bodices [lingerie]; paper hats [clothing]; coats; hoods [clothing]; money belts [clothing]; shoulder wraps; detachable collars; camisoles; neck scarfs [mufflers]; layettes [clothing]; corselets; suits; beach clothes; masquerade costumes; cravats; ascots; headbands [clothing]; pocket squares; scarfs; gabardines [clothing]; gaiters; jackets [clothing]; fishermen’s jackets; stocking suspenders; skirts; jumper dresses; aprons [clothing]; girdles; ski gloves; raincoats; ready-made clothing; paper clothing; knitwear [clothing]; jerseys [clothing]; leg warmers; leggings [trousers]; liveries; hosiery; sweaters; muffs [clothing]; maniples; pelerines; mantillas; sleep masks; miniskirts; pants; vests; babies’ pants [clothing]; trousers; parkas; pelisses; furs [clothing]; chasubles; pajamas (Am.); cuffs; ponchos; pullovers; sock suspenders; brassieres; saris; sarongs; shawls; underpants; wimples; overcoats; outerclothing; knee-high stockings; petticoats; slips [undergarments]; fur stoles; tee-shirts; togas; wet suits for water-skiing; combinations [clothing]; uniforms; veils [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested caps [headwear]; berets; skull caps; hats; top hats; bathing caps; shower caps; miters [hats]; turbans; cap peaks are included in the broad category of the opponent’s headgear. Therefore, they are identical.

All the contested galoshes; footwear; training shoes; slippers; sandals; bath sandals; esparto shoes or sandals; bath shoes; gymnastic shoes; beach shoes; football shoes; ski boots; lace boots; half-boots; footmuffs, not electrically heated; boots; wooden shoes fall within the category of footwear. The contested goods in this category are similar to the opponent’s clothing. Footwear serves the same purpose as clothing: both are used to cover and protect various parts of the human body against the elements. Both can be articles of fashion, sportswear (e.g. ski boots and waterproof ski jackets) or loungewear (e.g. footmuffs and leggings). They are often found in the same retail outlets. Consumers, when seeking to purchase clothes, will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear.

The contested heelpieces for stockings, pockets for clothing, hat frames [skeletons]; ready-made linings [parts of clothing]; non-slipping devices for footwear; studs for football boots; fittings of metal for footwear; welts for footwear; shirt yokes; shirt fronts; dress shields; tips for footwear; heelpieces for footwear; footwear soles; insoles; heels; footwear uppers are dissimilar to all the opponent’s goods. They have different natures and purposes, target different consumers, are distributed through different channels and are manufactured and provided by different undertakings.

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 or similar are directed at the public at large. The degree of attention is considered average.

3. The signs

Glamourella
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 application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-speaking part of the relevant public.

The earlier mark is a word mark consisting of the verbal element ‘Glamourella’, which does not have a meaning from the perspective of the relevant public. There are no elements that are more distinctive or more dominant (visually eye-catching) than other elements.

The contested mark is a figurative mark consisting of the verbal element ‘GLAMOURBELLA’ depicted in standard upper case letters. The verbal element does not have a meaning from the perspective of the relevant public. There are no elements that are more distinctive or more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the letters (and the sound of the letters) ‘GLAMOUR*ELLA’. The earlier mark is a word mark and therefore the word as such is protected and not its written form. Consequently, it is irrelevant whether a word mark is depicted in lower or upper case letters. As the marks differ merely in the additional letter ‘B’ of the contested sign, the signs are visually and aurally highly similar.

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.

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 has no meaning in relation to any of the goods 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

A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the marks and between the goods. A lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. The signs are aurally and visually similar to a high degree.

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). The visual similarity and aural identity between the signs could lead consumers to think that the goods found to be similar come from the same undertaking or economically linked undertakings.

The Opposition Division considers that the additional letter ‘B’ of the contested sign is not sufficient to outweigh the visual and aural similarities, as outlined above in section c) of this decision.

The Bulgarian-speaking consumers of the goods at issue would without any doubt be confused when they encountered identical or similar goods marked by the later sign and would be led to believe that they were looking at goods protected by the earlier mark.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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 earlier European Union trade mark registration No 13 242 789 for the word mark ‘GLAMURELLA’. Since the above trade mark does not cover a broader scope of goods than earlier European Union trade mark registration No 9 897 257, examined above, 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.

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

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

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.