OPPOSITION No B 2 661 950

Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray's Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

Jianmao Wang, Piazza Sempronio Asellio 41/B,  00175 Roma, Italy (applicant).

On 26/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 950 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 764 146. The opposition is based on European Union trade mark registration No 2 347 870. 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 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

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

Class 3:         Soaps for personal use; perfumery, essential oils, cosmetics; toiletries; toilet preparations; shampoos; cosmetic kits; preparations for the care of the hair, skin and body; hair lotions, dyes and sprays; preparations for the bath and shower; depilatories; none of the aforesaid goods being tissues impregnated with liquid soap; none of the aforesaid being wet wipes of any kind.

Class 9:         Scientific, nautical, surveying, electric, photographic, cinematographic, optical, signalling, checking (supervision) apparatus and instruments; electrical appliances for the styling and care of the hair; electric hair waving, curling, perming and straightening apparatus; heated hairbrushes; glasses and spectacles, sunglasses, sun visors (eyewear), ski glasses, goggles and frames, cases, chains and straps therefor; contact lenses; parts and fittings therefor.

Class 14:         Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery and precious stones; horological and chronometric instruments.

Class 18:         Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas, parasols and walking sticks.

Class 25:         Clothing, footwear, headgear.

The contested goods are the following:

Class 14:         Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Time instruments; Jewellery boxes and watch boxes.

Class 18:         Saddlery, whips and animal apparel; Sausage skins and imitations thereof; Umbrellas and parasols; Luggage, bags, wallets and other carriers.

Class 25:         Clothing; Hats; Footwear.

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.

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 assumed to be identical are directed at the public at large and at customers with specific professional knowledge or expertise. The degree of attention will vary from average, for the majority of goods, to high or those which are expensive and not purchased on a frequent basis (those in class 14).

3. The signs

PER UNA	UNO & UNA
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 marks are word marks.

The earlier mark contains two word elements. Element PER can be understood in Italian public as a preposition ‘for/by’ and may be understood also by other Latin based languages, such as Spanish.  For other part of the public the word has no meaning.  The word UNA can be perceived as ‘one’ (female form) in some languages, such as Spanish and Italian. The mark has no elements that could be considered clearly more distinctive than other elements. The mark has no dominant elements.

The contested mark contains two word elements separated by an ampersand character. The word UNO can be perceived as ‘one’ (male form) in some languages, such as Spanish and Italian. It can also be perceived as a male first name, in Estonian, German. The word UNA can be perceived as explained above. The mark has no elements that could be considered clearly more distinctive than other elements. The mark has no dominant elements.

Visually, the signs coincide in the element UNA at their ends.  However, the marks differ in the words PER / UNO and also in the ampersand of the contested mark.

The first parts of the conflicting marks are different. 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, which makes the part placed at the left 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 in the sound of the word UNA, being the second word in both signs.  The pronunciation differs in the sound of the first words PER and UNO, and also in the pronunciation of the ampersand in the respective languages (pronounced ‘and’ in English, ‘Y’ in Spanish, for example).  

Therefore, the signs are aurally similar to a low degree.

Conceptually, for part of the public, the signs coincide in the meaning of the word UNA (‘one’) as explained above. The signs are conceptually similar to an average degree for that public.

For another part of the public, only one sign has a meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For another part of the public the signs have different meanings, and for this public, the signs are conceptually not similar.

Finally, for part of the public, none of the signs has a meaning, and for that public, the conceptual comparison is not possible and does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark 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.

5. Global assessment, other arguments and conclusion

The goods have been assumed identical. The similarities and dissimilarities of the signs have been discussed above.

The signs coincide only in the word element UNA placed at their ends.

The signs differ in the elements PER and UNO, in their beginnings, which is the part the public reads first. Another difference is the ampersand, which is perceived at all levels.  

These differences create visual, aural and conceptual distance between the signs at issue. The Opposition Division considers that even persons with only an average level of attention will not confuse the marks.

It should be noted that ‘(…) assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components’ (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, §  41).

These differences are considered to be sufficient to counteract the fact that some of the goods have been assumed identical. The differences between the marks are sufficiently strong to allow the relevant public to distinguish between them.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Justyna GBYL

Erkki MÜNTER

Begoña URIARTE VALIENTE

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.