OPPOSITION DIVISION
OPPOSITION No B 2 866 831
Divasconfec, S.L., Calle Raimon Casellas, 26, 08205 Sabadell (Barcelona), Spain
(opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de
Cataluña, 120, 08008 Barcelona, Spain (professional representative)
a g a i n s t
Mirko Djurovich, 5383 Av Coolbrook, Montreal Quebec H3X 2L3, Canada
(applicant), represented by Mathys & Squire LLP, Abbey House 32 Booth Street,
Manchester Lancashire M2 4AB, United Kingdom (professional representative).
On 12/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 866 831 is upheld for all the contested goods, namely
Class 25: Clothing, clothing accessories and footwear, namely: shorts,
jumpsuits, jerseys, t-shirts, hats, caps, bandanas, scarves, denim
jeans, socks, sneakers, shoes, underwear and bras.
2. European Union trade mark application No 15 621 006 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 621 006, ‘KEEP IT DIVA’, namely against all the goods in
Class 25. The opposition is based on European Union trade mark registration
No 10 418 457, . The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
Decision on Opposition No B 2 866 831 page: 2 of 6
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.
a) The goods
The goods on which the opposition is based are the following:
Class 25: Clothing for women, except corsetry and underwear, Ladies shoes
and women's headgear.
Class 35: Advertising, import, export, agencies and sole agencies, and retailing,
including retailing via the Interent and global computer networks of
clothing and clothing accessories.
Class 39: Transport; Packaging, storage and distribution of items, goods and
clothing.
The contested goods are the following:
Class 25: Clothing, clothing accessories and footwear, namely: shorts,
jumpsuits, jerseys, t-shirts, hats, caps, bandanas, scarves, denim
jeans, socks, sneakers, shoes, underwear and bras.
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 and services, indicates that
the specific services 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).
However, the term ‘namely’, used in the applicant’s list of goods to show the
relationship of individual goods and services to a broader category, is exclusive and
restricts the scope of protection only to the goods specifically listed.
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 25
The contested clothing, clothing accessories and footwear, namely: shorts,
jumpsuits, jerseys, t-shirts, hats, caps, bandanas, scarves, denim jeans, socks,
sneakers, shoes includes, as a broader category, or overlap with, the opponent’s
clothing for women, except corsetry and underwear, Ladies shoes and women's
headgear. Since the Opposition Division cannot dissect ex officio the broad
categories of the contested goods, they are considered identical to the opponent’s
goods.
Decision on Opposition No B 2 866 831 page: 3 of 6
The contested clothing, clothing accessories and footwear, namely: underwear and
bras are similar to the opponent’s clothing for women, except corsetry and
underwear. The goods at issue are clothing for women albeit not the same type of
clothing. They have the same nature, methods of use, producers and distribution
channels and furthermore, they coincide in the relevant public.
b) 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 average.
c) The signs
KEEP IT DIVA
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 trade mark contains the verbal element ‘DIVAS’ in rather standard, upper
case letters. Above this verbal element is the depiction of a flower.
The contested sign is a word mark, ‘KEEP IT DIVA’.
The word ‘DIVA(S)’ (in singular or plural form) will be understood by at least the vast
majority of the relevant public as referring to a highly distinguished female
singer/actress, a prima/donna, as it is identically present in many European Union
languages, including Bulgarian, Dutch, English, Finnish, French, German, Italian,
Spanish, Swedish and Danish. The possible meanings of this word are not related to
the goods at issue. As it is not descriptive, allusive or otherwise weak for the relevant
goods, it is distinctive to an average degree.
The flower depicted in the earlier mark has no meaning in relation to the goods and
services and is therefore of average distinctiveness.
Decision on Opposition No B 2 866 831 page: 4 of 6
The verbal elements ‘KEEP IT’ of the contested sign will, by the English-speaking
public, be associated with, inter alia, the meaning ‘save it, retain it, store it’. The sign
as a whole, ‘KEEP IT DIVA’, is a play on words, meaning something like ‘keep
going/hold on (to), diva’. The possible meanings of this expression, ‘KEEP IT DIVA’,
are not related to the goods at issue. As it is not descriptive, allusive or otherwise
weak for the relevant goods, it is distinctive. For the part of the public that does not
perceive the meaning of the verbal elements ‘KEEP IT’, but only the word ‘DIVA’ (or
none of these words), it is still distinctive.
In the earlier figurative mark, there is no element that can be considered more
dominant than the other one.
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).
Visually, the signs coincide in the word ‘DIVA(S)’, which is distinctive in both marks.
However, they differ in the fact that the word ‘DIVA’ is in singular form in the
contested sign whereas it is in plural form in the earlier mark, with an added letter ‘S’.
The signs also differ in the additional figurative elements of the earlier trade mark,
including the stylisation of the letters, and in the additional words ‘KEEP IT’ of the
contested sign, which are also distinctive.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the word ‛DIVA’,
present identically in both signs. This coinciding word is distinctive. The pronunciation
differs in the sound of the plural letter ‘S’, but only for part of the public, as the letter
‘S’ is silent in some languages, for example in French. The marks also differ in the
words ‛KEEP IT’ of the contested mark, which are distinctive, and have no
counterparts in the earlier sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks, namely the concepts of the word ‘DIVA(S)’ in both
signs for an important part of the public, of the expression ‘KEEP IT’ of the contested
sign for the English-speaking public and of the flower of the earlier mark for the entire
public .
For a vast majority of the public, the signs will be associated with the same meaning
in the word ‘DIVA(S)’, whether in singular or plural form. They differ in the concept of
the flower of the earlier mark (conveyed by the figurative element which has less
impact than the word) as well as, as regards the English-speaking public, in the
concept conveyed by the expression ‘KEEP IT’ of the contested sign which does not
alter the meaning of ‘DIVA’. For this public, the signs are similar to an average
degree.
For the public that does not understand the word ‘DIVA(S)’ (and will not understand
the expression ‘KEEP IT’ either), only the earlier mark conveys a concept, namely of
a flower, and the signs are not conceptually similar.
Decision on Opposition No B 2 866 831 page: 5 of 6
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) 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).
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/services covered are from the same or
economically linked undertakings.
In the present case, the goods are identical or similar. The degree of attention is
average.
The signs are visually and aurally similar to an average degree, as well as
conceptually similar to an average degree for a large part of the public, to the extent
that they coincide in the word ‘DIVA(S)’ (regardless if in singular or plural form) which
is a distinctive element in both signs. The element ‘DIVA’ of the contested mark is
fully included in the earlier mark, as its only verbal element.
Taking into account all the relevant circumstances of the case, the differences
between the marks are not sufficient to counterbalance the similarity between them.
The relevant public may believe that the relevant goods come from the same
undertaking or at least economically-linked undertakings.
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).
Considering all the above, there is a likelihood of confusion on the part of the public.
Decision on Opposition No B 2 866 831 page: 6 of 6
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 10 418 457. It follows that the contested trade mark
must be rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Catherine MEDINA Lena FRANKENBERG
GLANTZ
Loreto URRACA LUQUE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.