OPPOSITION No B 2 554 627
Indonesian Imports Inc, 339 Fifth Avenue, 2nd Floor, New York, New York 10016, United States of America (opponent), represented by Jeffrey Parker and Company, The Grange, Hinderclay, Suffolk IP22 1HX, United Kingdom (professional representative)
a g a i n s t
Giorgio Armani S.p.A., Milan Swiss Branch Mendrisio, Via Penate 4, 6850 Mendrisio, Switzerland (applicant), represented by Jacobacci & Partners S.P.A., Corso Emilia 8, 10152 Torino, Italy (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 554 627 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 826 623. The opposition is based on European Union trade mark registrations No 2 200 590 and No 10 995 173. The opponent invoked Article 8(1)(b) EUTMR.
Proof of use of earlier European Union trade mark No 2 200 590
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of one of the trade marks on which the opposition is based, namely European Union trade mark No 2 200 590.
The request was filed in due time and it is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
On 05/05/2016 the opponent was given two months to file the requested proof of use.
The opponent did not submit any evidence concerning the use of the earlier trade mark on which the opposition is based and stated that it did not intend to submit any evidence of use. It did not argue that there were proper reasons for non-use either.
According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office shall reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR as far as it is based on earlier European Union trade mark No 2 200 590.
Consequently, the examination of the likelihood of confusion will continue based on the remaining right, European Union trade mark No 10 995 173, which is not subject to the proof of use requirement.
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 goods
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear; Aprons [clothing]; Ascots; Babies’ pants [clothing]; Bandanas [neckerchiefs]; Bath robes; Bath sandals; Bath slippers; Bathing caps; Bathing trunks; Beach clothes; Beach shoes; Belts [clothing]; Berets; Bibs, not of paper; Boas [necklets]; Bodices [lingerie]; Boot uppers; Boots; Boots for sports; Brassieres; Breeches for wear; Camisoles; Cap peaks; Caps [headwear]; Chasubles; Clothing; Clothing for gymnastics; Clothing of imitations of leather; Clothing of leather; Coats; Collar protectors; Combinations [clothing]; Corselets; Corsets [underclothing]; Cuffs; Cyclists’ clothing; Detachable collars; Dress shields; Dresses; Dressing gowns; Ear muffs [clothing]; Esparto shoes or sandals; Fishing vests; Fittings of metal for footwear; Football boots; Footmuffs, not electrically heated; Footwear; Footwear uppers; Fur stoles; Furs [clothing]; Gabardines [clothing]; Gaiter straps; Galoshes; Garters; Girdles; Gloves [clothing]; Gymnastic shoes; Half-boots; Hat frames [skeletons]; Hats; Headbands [clothing]; Headgear for wear; Heelpieces for footwear; Heelpieces for stockings; Heels; Hoods [clothing]; Hosiery; Inner soles; Jackets [clothing]; Jerseys [clothing]; Jumper dresses; Knitwear [clothing]; Lace boots; Layettes [clothing]; Leg warmers; Leggings [trousers]; Liveries; Maniples; Mantillas; Masquerade costumes; Miters [hats]; Mittens; Money belts [clothing]; Motorists’ clothing; Muffs [clothing]; Neckties; Non-slipping devices for footwear; Outerclothing; Pants; Paper clothing; Paper hats [clothing]; Parkas; Pelerines; Pelisses; Petticoats; Pocket squares; Pockets for clothing; Ponchos; Pullovers; Pyjamas; Ready-made clothing; Ready-made linings [parts of clothing]; Sandals; Saris; Sarongs; Sashes for wear; Scarfs; Shawls; Shirt fronts; Shirt yokes; Shirts; Shoes; Short-sleeve shirts; Shoulder wraps; Shower caps; Singlets; Ski boots; Ski gloves; Skirts; Skorts; Skull caps; Sleep masks; Slippers; Slips [undergarments]; Smocks; Sock suspenders; Socks; Soles for footwear; Spats; Sports shoes; Stocking suspenders; Stockings; Stockings (Sweat-absorbent -); Studs for football boots; Stuff jackets [clothing]; Suits; Suspenders; Sweaters; Swimsuits; Teddies [undergarments]; Tee-shirts; Tights; Tips for footwear; Togas; Top hats; Topcoats; Trousers; Turbans; Underpants; Underwear; Underwear (Anti-sweat -); Uniforms; Veils [clothing]; Vests; Waterproof clothing; Welts for footwear; Wet suits for water-skiing; Wimples; Wooden shoes; Belts.
The contested goods are the following:
Class 18: Hand bags; Baggage; Card holders; Card cases of leather; Leather credit card holders; Baggage; File folders made of leather; Key fobs made of leather; Hand bags; Travel garment covers; Make-up bags, not fitted; Sports bags included in this class; Athletics bags; Evening bags and shoulder bags for men; Shopping bags made of skin; School book bags; Travel garment covers; Shoe carriers for travel; Beach bags; Diaper bags; Rucksacks; Boston bags; Travelling cases; Canvas bags; Overnight bags; Trolleys; Satchels; Formal handbags; Vanity cases (not fitted); Leather; Chests and boxes of leather; Briefcases [leather goods]; Harness made from leather; Umbrellas; Leather leashes.
Class 25: Jackets; Jackets [clothing]; Pants (Am.); Skirts; Tops; Mackintoshes; Topcoats; Waist belts; Shoulder straps for clothing; Gowns; Topcoats; Pullovers; Denim jeans; Gowns; Cloaks; Parkas; Shirts; Undershirts; Cardigans; Underwear; Baby doll nighties; Bath robes; bathing wear; Negligees; Swimming costumes; Dressing gowns; Shawls; Sashes for wear; Ties; Neck ties; Sweat shirts; Knitwear; Polo shirts; Tights; Trousers shorts; Stockings; Socks; Footwear; Slippers; Covers for shoes; Galoshes; Clogs; soles for footwear; Uppers (footwear); Boots; Ski boots; Ankle boots; Espadrilles; Sandals; Bath sandals; Gloves; Fingerless gloves; Hats and caps; Visors [hatmaking].
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.
- 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 assumed to be identical are directed at the public at large and at a professional public with specific professional knowledge or expertise. The degree of attention is considered average.
- The signs
| THE SAK
|
|
|
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 earlier mark is a word mark, ‘THE SAK’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters. Being a word mark, the earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.
The contested sign is a figurative mark composed of the words ‘GIORGIO ARMANI’ and the stylised verbal elements ‘le Sac’ with the number ‘11’ underneath them.
The elements ‘THE SAK’ of the earlier mark might be perceived by the English-speaking part of the relevant public as ‘the sack’, ‘sak’ being a misspelling of the word ‘sack’ meaning ‘a large bag made of coarse cloth, thick paper, etc, used as a container, short for rucksack’ (www.collinsdictionary.com). The elements ‘le Sac’ in the contested sign will be perceived by the French-speaking public and by part of the English-speaking public as ‘the bag’; ‘sac’ will be perceived by the latter part of the public as a misspelling of the English word ‘sack’.
The elements ‘LE SAK’ of the earlier mark have a normal degree of distinctiveness in relation to the relevant goods in Class 25.
Bearing in mind that some of the relevant contested goods in Class 18 are bags or sacks, the elements ‘le Sac’ in the contested sign are weak for part of the relevant public (e.g. the French-speaking public and part of English-speaking public) for some of the goods in Class 18. For the remaining part of the relevant public, which will perceive these words as meaningless, and for the remaining contested goods in Classes 18 and 25, these elements have a normal degree of distinctiveness. For this part of the relevant public, and with respect to those goods, the mark has no elements that could be considered clearly more distinctive than other elements.
The words ‘GIORGIO ARMANI’ in the contested sign will be understood by a significant part of the relevant public as an Italian first name and surname, and have a normal distinctiveness in relation to the relevant goods in Classes 18 and 25. Nevertheless, the words ‘GIORGIO ARMANI’ are less dominant in the mark as they are depicted in smaller characters and are somewhat overshadowed by the more eye-catching elements ‘le Sac 11’. The element ‘11’ in the contested sign will be perceived as the number ‘11’. This element has a normal degree of distinctiveness in relation to the relevant goods in Classes 18 and 25.
Visually, the signs coincide in the letters ‘**(*)E SA*’. However, they differ in the letters ‘TH* **K’ of the earlier mark and the letters ‘L* **C’ and the number 11 in the contested sign. They also differ in the additional words ‘GIORGIO ARMANI’ which are, despite being less dominant, distinctive. Furthermore, the marks also differ in the stylisation of the contested sign.
The marks have different beginnings, ‘THE’ in the earlier mark and ‘(GIORGIO ARMANI) LE’ in the contested sign. 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 or from top to bottom, which makes the part placed at the left or at the top of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides for a significant part of the relevant public in the words, ‘SAK’ and ‘SAC’, as the letters ‘K’ and ‘C’ are pronounced identically in many languages. The pronunciation differs in the sounds of the marks’ first words, ‘THE’ in the earlier mark and ‘GIORGIO ARMANI’, if pronounced, and ‘LE’ in the contested sign, which, as explained above, will attract the consumers’ primary attention. The pronunciation further differs in the sound of the element ‘11’ in the contested sign, which will be pronounced differently in each of the European languages (for example ‘eleven’ in English, ‘onze’ in French, ‘elf’ in German and Dutch, ‘once’ in Spanish, etc.).
Therefore, the signs are aurally similar to an average degree.
Conceptually, while part of the relevant public in the relevant territory will perceive the words ‘GIORGIO ARMANI’ in the contested sign as an Italian first name and surname, the element ‘11’ as the number ‘11’, and the element ‘le Sac’ as ‘the bag’, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.
For the part of the relevant public that will perceive only the earlier mark ‘THE SAK’ and the elements ‘GIORGIO ARMANI’ and/or ‘11’ of the contested sign with the meanings specified above, the marks are also not conceptually similar.
Another part of the relevant public might perceive, in addition to the meaning of the elements ‘GIORGIO ARMANI’ and/or ‘11’ in the contested sign, both the verbal elements ‘THE SAK’ of the earlier mark and ‘LE SAC’ of the contested sign as meaning ‘the bag’, because the words ‘THE’ and ‘LE’ are basic English and French words and the words ‘sak’ and ‘sac’ might be perceived as misspellings of the English word ‘sack’ or the French word ‘sac’. However, as explained above, the meaning of ‘le Sac’ in the contested sign is weak in relation to some of the goods in Class 18. For this part of the public, as the signs will be associated with similar meanings, they are conceptually similar to a low degree with respect to some of the goods in Class 18, for which these elements have a low degree of distinctive character, and conceptually similar to an average degree with respect to the remaining goods, for which these elements have an average degree of distinctiveness.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 (Class 25) from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (Lloyd Schuhfabrik, § 20; Sabèl, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
As has been concluded above, the marks in dispute are visually similar to a low degree and aurally similar to an average degree; for part of the relevant public and for some of the relevant goods, the marks are conceptually similar to an average degree.
The Court has stated that, when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods or services in question and the way they are marketed (Lloyd Schuhfabrik, § 27).
The category of goods involved may increase the importance of one of the different aspects of similarity between signs (visual, aural and conceptual), because of the way in which the goods are ordered and/or purchased. An aural or conceptual comparison between signs may be less important in the case of goods that are usually examined visually or may be tried on before being bought. In such cases, the visual impression of signs counts for more in the assessment of likelihood of confusion.
The relevant goods in the present case are leather, goods made of leather and imitations of leather in Class 18 and clothing, footwear and headgear in Class 25.
Generally in clothes shops, customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). The same applies to footwear and headgear, as well as to the leather articles in Class 18, which are all purchased after a visual inspection.
Therefore, the considerable visual differences between the signs caused by the different verbal elements and stylisation of the contested sign are particularly relevant when assessing the likelihood of confusion between them and are considered to outweigh the average degree of aural and, for part of the relevant public and some of the goods, conceptual similarity.
In an overall assessment, the visual differences between the conflicting signs are considered sufficient to allow consumers to distinguish between the goods of the two different producers when selecting them, and this is considered to have more importance than the identity between the goods; therefore the lesser degree of similarity between the signs is not offset by the identity between the goods. Furthermore, the fact that the misspelling of the word ‘sack’ and ‘sac’ is not a common misspelling and the fact that the contested sign has additional distinctive concepts, ‘GIORGIO ARMANI’ and ‘11’, will help the average consumer to distinguish between the signs.
Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
| Chantal VAN RIEL | Saida CRABBE | Inés GARCÍA LLEDÓ
|
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.