OPPOSITION No B 2 608 621

Style Group Bramds Limited, 32-38 Scrutton Street, London  EC2A 4RQ, United Kingdom (opponent), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shillington, Hitchin, Hertfordshire SG5 3PF, United Kingdom (professional representative)

a g a i n s t

Gianluigi Daga, Via XXV Aprile, 4, 47011 Castrocaro Terme e Terra del Sole, Italy (applicant), represented by Mar.Bre S.R.L., Via San Filippo, 2, 60044 Fabriano (AN), Italy (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 608 621 is partially upheld, namely for the following contested goods and services:

Class 18: Combination walking sticks and umbrellas; Bags for umbrellas; Umbrella covers; Umbrella handles; Telescopic umbrellas; Umbrellas; Luggage, bags, wallets and other carriers; Shoulder belts; Boxes made of leather; Boxes of leather or leather board; Suitcases; Toiletry bags; Cosmetic cases sold empty; Vanity cases, not fitted; All-purpose carrying bags; Bags made of imitation leather; Leather bags and wallets; Cosmetic bags sold empty; Jewelry bags of textile material [empty]; Purses; Pouches for holding make-up, keys and other personal items; Clutches [purses]; Luggage tags [leatherware]; Wallets; Daypacks; Backpacks.

Class 35: Commercial trading and consumer information services; Advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; Administrative processing and organising of mail order services; Provision of an on-line marketplace for buyers and sellers of goods and services; Arranging of presentations for business purposes; Arranging of displays for advertising purposes; Arranging business introductions relating to the buying and selling of products; Business administration services for processing sales made on the internet.

2.        European Union trade mark application No 14 632 632 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 632 632, namely against all the goods and services in Classes 3, 18 and 35. The opposition is based on international trade mark registration No 1 184 364 designating the European Union, United Kingdom trade mark registration No 3 014 450 and the non-registered trade mark ‘JV’ in the UK. The opponent invoked Article 8(1)(b), 8(5) and 8(4) EUTMR.

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 non-registered trade mark ‘JV’.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 18/01/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 23/05/2016.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

The Opposition Division will now examine the opposition in relation to the opponent’s international trade mark registration No 1 184 364 designating the European Union.

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 the following:

Class 9: Sunglasses, spectacles, spectacle cases, chains and eyeglass frames, eyeshades, lenses, contact lenses, cameras, cases for cameras.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery; limitation jewellery; costume jewellery; precious stones; horological and chronometric instruments; watches; straps for watches; cuff links.

Class 18: Leather and imitations of leather and goods made of theses materials (not included in other classes); bags; trunks and travelling bags; vanity cases; holdalls, backpacks and rucksacks; wallets, key cases, purses and pouches; credit card cases of leather, business card cases; tote bags, bottle bags, record bags, book bags; handbags; sports bags; shopping bags; luggage and suitcases, weekend bags; jewellery rolls; attache cases and briefcases; umbrellas, parasols and walking sticks; parts for all the aforesaid goods.

Class 25: Articles of clothing, footwear and headwear; lingerie; swimwear; nightwear.

Class 35: Retail services, mail order retail services and electronic or online retail services connected with the sale of jewellery, belts, bags, fashion accessories, leather items, clothing, footwear and headgear; marketing and promotional services; loyalty card services; advertising services; direct mail advertising; advisory and consultancy services relating to the aforesaid services.

The contested goods and services are the following:

Class 3: Toiletries; Essential oils and aromatic extracts; Cosmetic kits; Extracts of flowers [perfumes]; Potpourris [fragrances]; Room fragrancing preparations; Sachets for perfuming linen; Body cleaning and beauty care preparations; Oral hygiene preparations; Perfumery and fragrances; Adhesives for cosmetic purposes; Cotton sticks for cosmetic purposes; Massage waxes; Cosmetics and cosmetic preparations; Slimming aids [cosmetic], other than for medical use; Massage creams, not medicated; Impregnated cloths for cosmetic use; Pumice stones for use on the body; Abrasive preparations for use on the body; Cosmetic preparations for use as aids to slimming; Cosmetic preparations for body care; Pedicure preparations; Impregnated cleaning pads impregnated with cosmetics; Tissues impregnated with cosmetic lotions; Scalp treatments (Non-medicated -).

Class 18: Combination walking sticks and umbrellas; Bags for umbrellas; Umbrella covers; Umbrella handles; Telescopic umbrellas; Umbrellas; Luggage, bags, wallets and other carriers; Shoulder belts; Boxes made of leather; Boxes of leather or leather board; Suitcases; Toiletry bags; Cosmetic cases sold empty; Vanity cases, not fitted; All-purpose carrying bags; Bags made of imitation leather; Leather bags and wallets; Cosmetic bags sold empty; Jewelry bags of textile material [empty]; Purses; Pouches for holding make-up, keys and other personal items; Clutches [purses]; Luggage tags [leatherware]; Wallets; Daypacks; Backpacks.

Class 35: Commercial trading and consumer information services; Advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; Administrative processing and organising of mail order services; Provision of an on-line marketplace for buyers and sellers of goods and services; Arranging of presentations for business purposes; Arranging of displays for advertising purposes; Arranging business introductions relating to the buying and selling of products; Business administration services for processing sales made on the internet.

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 3

The contested goods in Class 3 include different types of toiletries, cosmetics and perfumery and fragrances. The earlier mark is protected for (sun) glasses, cameras and cases for these goods (Class 9), Precious metals and their alloys, jewellery; clocks and watches (Class 14), leather and imitations of leather and goods made of these materials, travel goods (Class 18), clothing and footwear (Class 25) and retail services connected with the sale of the said goods as well as advertising and advisory and consultancy services in relation to these services (Class 35). The conflicting goods and services have a different nature and purpose, they belong to different areas of commercial activity, and they are not normally produced by the same manufacturers or provided by the same suppliers. Therefore, these goods are considered to be dissimilar to the any of the goods and services of the opponent.

Contested goods in Class 18

Luggage; suitcases; backpacks; umbrellas; bags; wallets and purses are identically contained in both lists of goods (including synonyms).

The contested Clutches [purses] are included in the broad category of the opponent’s goods purses and pouches. Therefore, they are identical.

The contested Telescopic umbrellas are included in the broad category of the opponent’s goods umbrellas. Therefore, they are identical.

The contested combination walking sticks and umbrellas are included in the broad category of the opponent’s goods umbrellas, parasols and walking sticks. Therefore, they are identical.

The contested daypacks are included in the broad category of, or overlap with, the opponent’s goods backpacks and rucksacks. Therefore, they are identical.

The contested vanity cases, not fitted are included in the broad category of the opponent’s goods vanity cases. Therefore, they are identical.

The contested leather bags and wallets; other carriers; Luggage tags [leatherware]; shoulder belts; boxes made of leather; boxes of leather or leather board are included in the broad category of, or overlap with, the opponent’s goods leather and goods made of these materials (not included in other classes). Therefore, they are identical.

The contested bags for umbrellas; jewelry bags of textile material [empty]; toiletry bags; cosmetic bags sold empty; cosmetic cases sold empty; all-purpose carrying bags; bags made of imitation leather are included in the broad category of, or overlap with, the opponent’s goods bags. Therefore, they are identical.

Pouches for holding make-up, keys and other personal items are included in the broad category of the opponent’s goods pouches. Therefore, they are identical.

The remaining contested umbrella covers; umbrella handles are included in the opponent’s goods parts for the aforesaid goods (umbrellas). Therefore, they are identical.

Contested services in Class 35

The contested advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; Administrative processing and organising of mail order services are included in the broad category of, or overlap with, the opponent’s advisory and consultancy services relating to Retail services, mail order retail services and electronic or online retail services connected with the sale of jewellery, belts, bags, fashion accessories, leather items, clothing, footwear and headgear; marketing and promotional services. Therefore, they are identical.

The contested Provision of an on-line marketplace for buyers and sellers of goods and services are included in the broad category of the opponent’s Retail services, mail order retail services and electronic or online retail services connected with the sale of jewellery, belts, bags, fashion accessories, leather items, clothing, footwear and headgear; marketing and promotional services. Therefore, they are identical.

The contested arranging of displays for advertising purposes are included in the broad category of the opponent’s advertising services. Therefore, they are identical.

The contested services arranging of presentations for business purposes; Arranging business introductions relating to the buying and selling of products are similar to the opponent’s advertising services. They have the same purpose, providers and distribution channels.

Business administration services for processing sales made on the internet are provided by specialist companies such as marketing and business consultants. They are therefore similar to the opponent’s services advisory and consultancy services relating to the aforesaid services (Retail services, mail order retail services and electronic or online retail services connected with the sale of jewellery, belts, bags, fashion accessories, leather items, clothing, footwear and headgear; marketing and promotional services; loyalty card services; advertising services; direct mail advertising): they have the same purpose, can be rendered by the same providers and are directed at the same end-users.

The further contested commercial trading and consumer information services are similar to the opponent’s advisory and consultancy services relating to the aforesaid services (Retail services, mail order retail services and electronic or online retail services connected with the sale of jewellery, belts, bags, fashion accessories, leather items, clothing, footwear and headgear; marketing and promotional services; loyalty card services; advertising services; direct mail advertising). The latter are services that are usually rendered by companies specialised in this field such as business consultants. These companies gather information and provide tools and expertise to enable their costumers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and assessments, cost and price analyses, organisational consultancy. These services also include any ‘consultancy’ and ‘advisory’ activity that may be useful for the Retail services, such as how to do marketing, how to research consumer trends, how to launch new products etc. On the other hand, commercial trading, is, in its broadest sense, the operating of a business for profit, although it usually refers to those activities involving buying and selling as opposed to industry. Consumer information services are services which provide information and consultation on the products sold and services provided. All these services have a similar purpose and nature as they are involved in the running and operating of businesses and may provide advice and information to enable a company to function successfully in a given market segment. These services are rendered through the same channels and providers and to the same end users. They are, therefore, considered to be similar.

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 and services found to be identical or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

3. The signs

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 figurative mark depicting the letters ‘J’ and ‘V’ in black colour placed in a white circle with a black outline. In relation to the goods and services, the letters ‘JV’ have no meaning and are, therefore, distinctive.

The contested sign is a figurative mark depicting the black bold capital letters ‘J’ and ‘V’ in a slightly stylised way. They are separated by the ‘&’ symbol in grey colour. Under the letters the element ‘1965’ is placed. The number ‘1965’ will be perceived as referring to the year of establishment of the applicant’s company. Therefore, this element is non-distinctive for all the goods and services.

As regards the earlier sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature (circle). Therefore, the verbal element, namely the letters ‘JV’ are more distinctive than the figurative element.

Both marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘JV’. However, they differ in the additional ampersand and in the non-distinctive element ‘1965’ in the contested sign, which have no counterpart in the earlier mark. Moreover, the signs differ in the figurative and graphical stylisation in the conflicting signs.

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).

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛JV’, present identically in both signs. The pronunciation differs in the sound of the pronunciation of the ‘&’-symbol and in the element ‘1965’ which, however, is not distinctive.

Therefore, the signs are aurally highly similar.

Conceptually, although none of the signs has a meaning for the public in the relevant territory, the public will perceive the element ‘1965’ in the contested sign, as explained above. However, it is not sufficient to establish any concept as this element is non-distinctive and cannot indicate the commercial origin of any of the marks. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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).

Account must be also taken of the fact that the average consumers rarely have the chance to make a direct comparison between different marks, but must trust their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The goods and services are partly identical and partly similar and partly dissimilar. The earlier mark is considered to have an average degree of distinctiveness and the degree of attention is average.

The signs are visually similar to an average degree and aurally to a high degree due to the sequence of letters ‘JV’ that they have in common. The differences in the signs reside in secondary or non-distinctive or less distinctive aspects that are not sufficient to distance the marks.

It should be borne in mind that 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 services covered are from the same or economically linked undertakings. In this regard, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub brand, a variation of the earlier mark, configured in a different way according to the type of services which it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). Consequently, there is a patent risk that the marks will be confused.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 184 364 designating the European Union.

It follows from the above that the contested trade mark must be rejected for the goods and services 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade mark:

• United Kingdom trade mark registration No 3 014 450 for the figurative trade mark registration.

Since this mark is identical to the one which has been compared and covers the same scope of goods and services, 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.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 18/01/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 23/05/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

The documents submitted by the opponent in reply to the applicant’s observations on 05/12/2016 are not taken into account for the examination of reputation given that the documents were filed after the expiry of the abovementioned time limit.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lars HELBERT

Sigrid DICKMANNS

Claudia MARTINI

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.