OPPOSITION No B 2 549 387

Corinus AG, Thurgauerstr. 117, 8065 Zürich- Glattburg, Switzerland (opponent), represented by Diehl & Partner, Erika-Mann-Strasse 9, 80636 München, Germany (professional representative)

a g a i n s t

Yoox Net-A-Porter Group S.p.A., Via Morimondo, 17, 20143 Milano, Italy (holder), represented by Jaumann S.a.s. di Paolo Jaumann & C., Via San Giovanni sul Muro, 13, 20121 Milano, Italy (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 549 387 is partially upheld, namely for the following contested goods:

Class 18:        Goods made of leather and imitations of leather and not included in other classes; attache cases; bags; bags for sports; beach bags; card cases [notecases]; credit card cases [wallets]; handbags; haversacks; key cases; wallets; pouch baby carriers; purses; rucksacks.

Class 25:        Clothing, footwear and headgear, including ascots; clothing for babies; pants [clothing]; bandanas [neckerchiefs]; bathing caps; bathing suits; bathing trunks; bath robes; sandals; slippers; beach clothes; beach shoes; belts [clothing]; berets; boas [necklets]; bodices [lingerie]; boots; boxer shorts; braces for clothing; camisoles; caps [headwear]; clothing for gymnastics; clothing of imitations of leather; clothing of leather; coats; collars [clothing]; combinations [clothing]; corselets; corsets [underclothing]; cuffs; dresses; ear muffs [clothing]; shoes for sports; furs [clothing]; fur stoles; gabardines [clothing]; gaiters; galoshes; garters; girdles; gloves [clothing]; hats; headbands [clothing]; hosiery; jackets [clothing]; jerseys [clothing]; jumpers; knitwear [clothing]; layettes [clothing]; leggings; mantillas; muffs; neckties; outerclothing; overalls; overcoats; pajamas [am.]; panties; parkas; petticoats; ponchos; saris; sarongs; scarfs; shawls; shirts; shoes; shower caps; skirts; sleep masks; slippers; slips [undergarments]; socks; stockings; suits; sweaters; teddies [undergarments]; tee-shirts; tights; togas; trousers; underpants; underwear; vests; visors [headwear].

2.        International registration No 1 203 357 is refused protection in respect of the European Union for all of 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 international registration designating the European Union No 1 203 357. The opposition is based on the following earlier marks:

1. German trade mark registration No 2 014 669 for the figurative sign ;

2. international trade mark registration No 864 647 designating Austria, the Benelux and Germany for the figurative sign ;

3. international trade mark registration No 441 728 designating the Benelux, Croatia, Italy and Slovenia, for the figurative sign ;

4. international trade mark registration No 1 050 267 designating Austria, the Benelux and Germany, for the word mark ‘MAISON LEONARDO’.

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF EARLIER INTERNATIONAL TRADE MARK REGISTRATION No 864 647

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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 shall 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 shall 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 particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

On 17/07/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 22/11/2015.

With respect to earlier international trade mark registration No 864 647 the evidence filed by the opponent consists of extracts from the ROMARIN database, in French and English. According to the evidence, the expected expiration date of the registration (INID code 180) is 21/09/2015.

The evidence submitted by the opponent is not sufficient to substantiate the opponent’s earlier mark, because it shows that the term of protection expired before the expiration of the time limit for substantiation. Moreover, the opponent failed to prove that the term of protection of this trade mark extends beyond the time limit for substantiation.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must, therefore, be rejected as unfounded, as far as it is based on earlier international trade mark registration No 864 647.

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.

Proof of use of all the earlier marks was requested by the holder in accordance with Article 42(2) EUTMR. Indeed, earlier German trade mark registration No 2 014 669 and international trade mark registration No 441 728 were subject to the proof of use requirement on the relevant date for requesting proof of use (first republication of the contested international registration + six months). However, earlier international trade mark registration No 1 050 267 was still in the ‘grace period’ on the relevant date.

The Opposition Division finds it appropriate to begin the assessment of the opponent’s claims with earlier international trade mark registration No 1 050 267, being the earlier right which is not under proof of use requirement.

Furthermore, for reasons related to the comparison of signs, the Opposition Division finds it appropriate to first assess this international trade mark registration designating the Benelux, to take into consideration a potential impact of the meaning of the verbal elements in the marks in relation to the relevant goods on the part of the public in the Benelux.

1. The goods

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

Class 25:        Clothing of leather, mixed clothing and sports clothing.

The contested goods are the following:

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; animal skins; attache cases; bags; bags for sports; beach bags; boxes of leather or leather board; boxes of vulcanized fiber; card cases [notecases]; cases, of leather or leatherboard; clothing for pets; collars for animals; coverings of skins [furs]; covers for horse-saddles; credit card cases [wallets]; curried skins; fur; game bags [hunting accessories] sold empty; garment bags for travel; handbags; haversacks; horse blankets; horse collars; horseshoes; imitation leather; key cases; kid; knee-pads for horses; leatherboard; leather laces; leather leads; leather straps; leather thread; leather, unworked or semi-worked; moleskin [imitation of leather]; mountaineering sticks; music cases; muzzles; nose bags [feed bags]; pads for horse saddles; wallets; pouch baby carriers; purses; riding saddles; rucksacks; saddlery; school bags; shopping bags; shoulder belts [straps] of leather; suitcases; travelling bags; travelling sets [leatherware]; travelling trunks; trunks [luggage]; valises; valves of leather; vanity cases, not fitted; walking stick seats; wheeled shopping bags.

Class 25:        Clothing, footwear and headgear, including ascots; clothing for babies; pants [clothing]; bandanas [neckerchiefs]; bathing caps; bathing suits; bathing trunks; bath robes; sandals; slippers; beach clothes; beach shoes; belts [clothing]; berets; boas [necklets]; bodices [lingerie]; boots; boxer shorts; braces for clothing; camisoles; caps [headwear]; clothing for gymnastics; clothing of imitations of leather; clothing of leather; coats; collars [clothing]; combinations [clothing]; corselets; corsets [underclothing]; cuffs; dresses; ear muffs [clothing]; shoes for sports; furs [clothing]; fur stoles; gabardines [clothing]; gaiters; galoshes; garters; girdles; gloves [clothing]; hats; headbands [clothing]; hosiery; jackets [clothing]; jerseys [clothing]; jumpers; knitwear [clothing]; layettes [clothing]; leggings; mantillas; muffs; neckties; outerclothing; overalls; overcoats; pajamas [am.]; panties; parkas; petticoats; ponchos; saris; sarongs; scarfs; shawls; shirts; shoes; shower caps; skirts; sleep masks; slippers; slips [undergarments]; socks; stockings; suits; sweaters; teddies [undergarments]; tee-shirts; tights; togas; trousers; underpants; underwear; vests; visors [headwear].

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 18

The opponent’s clothing of leather, mixed clothing and sports clothing in Class 25 are leatherwear, clothing made of mixed materials (fabrics, leather etc.) and sportswear used to cover parts of the human body and protect them against the elements. They can be articles of fashion, garments designed for certain types of occupations, physical exercise or recreational activities.

The contested goods made of leather and imitations of leather, not included in other classes encompass attache cases; bags; bags for sports; beach bags; card cases [notecases]; credit card cases [wallets]; handbags; haversacks; key cases; wallets; purses; rucksacks, insofar as these items are made of the specified materials. These contested goods are related to the opponent’s clothing of leather, mixed clothing and sports clothing in Class 25. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer clothing, as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market related goods made of leather and imitations of leather. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The contested pouch baby carriers are similar to a low degree to the opponent’s mixed clothing in Class 25, the latter being a broad category that encompasses maternity clothing made of mixed materials. These goods are directed at the same public. Moreover, they are produced by the same manufacturers and have the same distribution channels.

The rest of the contested goods in this class have no relevant commonalities with any of the opponent’s goods.

The contested leather and imitations of leather; animal skins (listed twice); hides; curried skins; fur; imitation leather; kid; leatherboard; leather, unworked or semi-worked; moleskin [imitation of leather] refer to the skins of various kinds of animals, imitations or composite materials made thereof. These are raw materials. On the other hand, the contested coverings of skins [furs]; leather laces; leather straps; leather thread; valves of leather are very specific goods made of leather for use in the manufacture or finishing of other goods such as clothing, footwear, furniture etc. They are semi-finished products. The fact that one product is used for manufacturing another (for example, leather for clothing) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The contested raw or semi-finished materials are intended for use in the industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of different natures and serve different purposes from those of the opponent’s goods in Class 25. Therefore, these goods are dissimilar to all of the opponent’s goods.

The contested trunks; travelling trunks; trunks [luggage] are large packing cases or boxes that clasp shut, used as luggage or for storage. The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun. The contested walking sticks are canes or other staffs used as aids for walking; mountaineering sticks are long, iron-tipped staffs used by hikers and mountain climbers; walking stick seats can refer to hiking equipment or support aids for people with limited mobility. The contested whips are instruments used for driving animals; harness are the gear or tackle with which a draft animal pulls a vehicle or implement; saddlery (listed twice) is equipment for horses, such as saddles and harnesses; covers for horse-saddles; horse blankets; horse collars; horseshoes; knee-pads for horses; nose bags [feed bags]; pads for horse saddles; riding saddles are equestrian articles. The nature of these goods is very different from that of the opponent’s goods in Class 25. They serve very different purposes (storage, protection from rain/sun, assistance with walking, aid in the control and/or riding of animals versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are dissimilar to all of the opponent’s goods.

The same reasoning applies to the contested travelling bags (listed twice); garment bags for travel; suitcases; travelling sets [leatherware]; valises; vanity cases, not fitted. These goods are considered dissimilar to the opponent’s goods in Class 25. Travelling bags; suitcases; valises are for carrying things when travelling; garment bags for travel are special carriers for clothing; vanity cases, not fitted are luggage items intended for toiletries; travelling sets refer to complete sets of various luggage items. None of these contested goods satisfy the same needs as clothing. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

The contested boxes of leather or leather board; boxes of vulcanized fiber; cases, of leather or leatherboard are cases or boxes used as luggage, for storage, for packaging or for carrying things. The contested clothing for pets; collars for animals; leather leads; muzzles are articles for pet care and handling. The contested game bags [hunting accessories] sold empty are hunters’ articles with a special design and purpose. The contested music cases are carriers for sheet music. The contested school bags are intended for children to carry books and other things to and from school and are usually sold along with school supplies and stationery. The contested shopping bags; wheeled shopping bags are intended for carrying shopping, especially groceries. The contested shoulder belts [straps] of leather are essentially soldiers’ equipment used for carrying things over the shoulder and across the body. The nature of these contested goods is very different from that of the opponent’s goods in Class 25. They serve clearly different purposes. Moreover, they do not usually have the same retail outlets and are not usually produced by the same manufacturers. They are not complementary or in competition either. Therefore, the abovementioned contested goods are dissimilar to all of the opponent’s goods.

Contested goods in Class 25

Before proceeding to the comparison, an interpretation of the wording of the contested list of goods is required to determine the scope of protection of these goods. The term ‘including’, used in the holder’s list of goods in this class, 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Therefore, the contested clothing includes as a broader category the opponent’s clothing of leather, mixed clothing and sports clothing. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Clothing of leather is identically contained in both lists of goods.

The contested pants [clothing]; belts [clothing]; coats; dresses; gloves [clothing]; jackets [clothing]; outerclothing; overcoats; suits are included in the broader category of, or overlap with, the opponent’s clothing of leather. Therefore, they are identical.

The contested clothing of imitations of leather; gabardines [clothing]; muffs; parkas can be made from ‘mixed’ materials. For instance, the body part of a jacket is made of leather or imitation leather, whilst the sleeves, collar or trimmings are made from textile. Therefore, the contested goods overlap with the opponent’s mixed clothing. They are identical.

The contested bandanas [neckerchiefs]; bathing caps; bathing suits; bathing trunks; bath robes; beach clothes; boxer shorts; camisoles; clothing for gymnastics; ear muffs [clothing]; gaiters; girdles; headbands [clothing]; hosiery; jerseys [clothing]; jumpers; knitwear [clothing]; leggings; overalls; panties; scarfs; shirts; skirts; socks; stockings; sweaters; tee-shirts; tights; trousers; underpants; underwear; vests are either expressly intended for use in sports, or can be specifically designed for such use. Therefore, the contested goods are included in the broader category, or overlap with, the opponent’s sports clothing. They are identical.

The contested ascots; clothing for babies; boas [necklets]; bodices [lingerie]; braces for clothing; collars [clothing]; combinations [clothing]; corselets; corsets [underclothing]; cuffs; furs [clothing]; fur stoles; garters; layettes [clothing]; mantillas; neckties; pajamas [am.]; petticoats; ponchos; saris; sarongs; shawls; shower caps; sleep masks; slips [undergarments]; teddies [undergarments]; togas are various articles of outer clothing, lingerie, sets of clothing for new-born babies, and fashion accessories. They have the same nature and method of use as the opponent’s mixed clothing. They are directed at the same public and move through the same distribution channels. Furthermore, the public can expect that these goods originate from the same manufacturers. Therefore, they are similar.

The contested footwear, encompassing sandals; slippers (listed twice); beach shoes; boots; shoes for sports; galoshes; shoes serve the same purpose as the opponent’s clothing of leather, mixed clothing and sports clothing. These goods are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for 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. Therefore, the goods are similar.

The contested headgear, encompassing berets; caps [headwear]; hats; visors [headwear] and the opponent’s clothing of leather, mixed clothing and sports clothing are of a very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, these goods are 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 found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

MAISON LEONARDO	LEONARDO PRINCIPI
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530). This applies, by analogy, to international registrations designating the Benelux.

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

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).

Both signs comprise the word LEONARDO. The relevant public will recognise it as a male given name on account of the fact that its French version is Léonard and because the public is generally aware of famous persons with this name, for example Leonardo da Vinci or Leonardo DiCaprio. However, the name Léonard is rather rare in the relevant territory. Moreover, the name at issue does differ from its French version, which endows it with an unusual, foreign air. In the context of the relevant goods this element enjoys an average degree of distinctiveness.

The word MAISON of the earlier mark is a commonly used term, in trade, to refer to commercial establishments, firms. Therefore, it lacks any distinctiveness.

In the contested sign, the given name LEONARDO is juxtaposed with another word, PRINCIPI. It can be reasonably assumed that the public will perceive it as a surname. It has an average degree of distinctiveness for the goods at issue.

It follows that the earlier mark, as a whole, will be understood as the company of a person called Leonardo, whilst the contested sign will bring to mind the full name of a person, Leonardo Principi. Both signs convey the concept underlying the first name, Leonardo. Given that it is an uncommon name in the perception of the public and since none of the contested sign’s elements has a higher distinctive character than the other, the signs are conceptually similar to an average degree.

The holder argues that the public will perceive the earlier mark as referring to ‘the house of Leonardo da Vinci’. The Opposition Division however points out that there is nothing in the earlier mark to trigger a specific semantic association with the world-famous Renaissance figure. In that regard, the fact that the other trade marks invoked by the opponent as basis of the present opposition contain a figurative element that evokes Leonardo da Vinci is irrelevant for the present assessment. Therefore, the holder’s assertions in that regard must be set aside.

Also visually and aurally, the signs coincide in the word LEONARDO. They differ in the earlier mark’s word MAISON and the contested sign’s word PRINCIPI. Although it is true that the differentiating element in the earlier mark appears in its initial part, that circumstance has to be weighed against the fact that the element MAISON is devoid of any distinctiveness and consumers will tend to disregard it. On the other hand, the common element, LEONARDO, appears in the beginning of the contested sign. It is readily perceptible as an individual component and, both visually and aurally, occupies at least the same portion of the sign than its second element, PRINCIPI. Therefore, the signs are similar to an average degree.

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.

Some of the contested goods are identical or similar to varying degrees to those covered by the earlier mark. The similarity between the signs results from the element LEONARDO. Admittedly, the signs show some differences. Nevertheless, as shown in detail in section c) of this decision, they are insufficient to dispel the overall average degree of similarity between the signs from the perspective of the French-speaking part of the public in the Benelux.

The holder argues that, given that the differentiating element in the contested sign is a surname, there is no likelihood of confusion as consumers will be aware that there are many people with that first name. In that regard, the Opposition Division notes that the perception of signs made up of personal names may vary from country to country within the European Union. In the present case, the name Leonardo is not a common name in the perception of the relevant public.

The holder also points out that family names have, in principle, a higher intrinsic value as indicators of origin of goods than first names, and refers to European and Benelux case-law to support this claim. The Opposition Division finds that, in the present case, the presence of the unusual, rare first name is likely to focus the public’s attention and they could be misled into attributing the same, or economically linked, origin to the goods concerned. Thus, although the conflicting signs indeed coincide in a first name, the present case is an exception to the general principle. Furthermore, each opposition case has to be assessed on its merits.

The holder argues that the element LEONARDO has a low distinctive character given that there are many trade marks that include this element. In support of its argument the holder refers to several trade mark registrations in the Benelux and asserts that ‘no problems related to a possible likelihood of confusion seem to have appeared during the last years’. In addition, the holder submits a written opinion regarding the risk of confusion between the conflicting signs expressed by an IP professional acting in the Benelux. It is stated that, in the Benelux, there are many company names that contain the word LEONARDO, and some information is given in relation to companies from the fashion industry.

The Opposition Division notes that the existence of several trade mark registrations or company names is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks or company names have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks or other signs that include the element LEONARDO.

Likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by the Court: ‘…it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69).

Under these circumstances, the holder’s claims must be set aside.

Considering all the above, and based on the average degree of inherent distinctiveness of the earlier mark, the differences identified between the signs are insufficient to enable the relevant public to safely distinguish between them in the context of identical or similar 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 variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The Opposition Division concludes that there is a likelihood of confusion on the part of the French-speaking part of the relevant public and, therefore, the opposition is partly well-founded on the basis of the opponent’s international trade mark registration No 1 050 267 designating the Benelux. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public in the Benelux is sufficient to reject the contested application.

Likelihood of confusion also exists in relation to the goods that are similar to a low degree. 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). In the present case, the strong similarity established between the signs outweighs the low degree of similarity between the respective goods.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

As regards the remaining contested goods, the Opposition Division notes that the finding of dissimilarity between the goods does not depend on linguistic factors that may be different elsewhere in the Benelux outside of the French-speaking part of the territory. Therefore, there is no need to proceed with the examination of the opponent’s claims for the remaining part of the public in the Benelux, as the outcome of the opposition would still be the same.

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

1. German trade mark registration No 2 014 669 for the figurative sign , based on clothing; headgear in Class 25;

2. international trade mark registration No 441 728 for the figurative sign , designating the Benelux, Croatia, Italy and Slovenia and based on leather clothing, mixed clothing and sports clothing in Class 25;

3. international trade mark registration No 1 050 267 for the word mark ‘MAISON LEONARDO’, designating Austria and Germany and based on clothing of leather, mixed clothing and sports clothing in Class 25.  

In relation to earlier international trade mark registration No 441 728, the Opposition Division notes that it designates, inter alia, Croatia. That territory was correctly indicated in the notice of opposition (‘HR’). However, in its observations, the opponent refers to ‘Hungary’. As this international registration does not designate Hungary, the opponent’s arguments in that regard are inadmissible.

Proof of use of earlier German trade mark registration No 2 014 669 and international trade mark registration No 441 728 was submitted by the opponent. However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The below considerations will proceed as if genuine use of these earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

Earlier international trade mark registrations No 441 728 and No 1 050 267 cover the same scope of goods as compared in section a) of this decision. Earlier German trade mark No 2 014 669 is registered for clothing and headgear. Although it is true that this earlier mark enjoys a broader protection, the additional goods do not show more commonalities vis-à-vis the remaining contested goods in Class 18 and are dissimilar. The opponent’s clothing or headgear have different natures and purposes from those of the remaining contested goods that essentially are raw materials and semi-finished products made of leather or imitations of leather, luggage items, umbrellas and parasols, walking sticks, equestrian equipment, storage boxes, pet care/handling articles, and carriers with specific purposes. The fact that the contested leather materials can be used in the manufacture of the opponent’s clothing or headgear does not mean that the goods are complementary (see, to that effect, 09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39). These goods move through different channels of trade and are directed at diverging circles of the public. They do not originate from the same manufacturers either.

In view of the foregoing, the outcome of the opposition based on the other earlier marks cannot be different with respect to the goods for which the opposition has already been rejected, even if the evidence of use submitted by the opponent were sufficient to demonstrate genuine use of all the goods on which the opposition is based. Therefore, no likelihood of confusion exists with respect to those goods.

Given that the opposition is upheld on the basis of earlier international registration No 1 050 267 designating the Benelux which is not subject to proof of use, and since the question of genuine use of the other earlier marks is irrelevant for the outcome of this opposition, it is unnecessary to examine the evidence of use filed by the opponent in connection with German trade mark registration No 2 014 669 and international trade mark registration No 441 728.

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

Edith Elisabeth VAN DEN EEDE

Solveiga BIEZA

Julie GOUTARD

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.