URSULA KARVEN | Decision 2723966 – Trademarkers Legal Blog

OPPOSITION No B 2 723 966

Carven, Société par actions simplifiée, 10, Rue de l'Abbaye, 75006 Paris, France (opponent), represented by Nathalie Moullé-Berteaux, 56 Avenue Victor Hugo, 75783 Paris Cedex 16, France (professional representative)

a g a i n s t

Ursula Karven Media GmbH, Winkler Straße 22e, 14193 Berlin, Germany (applicant), represented by Bezzenberger Rechtsanwälte, Clausewitzstraße 4, 10629 Berlin, Germany (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 723 966 is upheld for all the contested goods, namely

Class 14: Jewels; Jewellery boxes and watch boxes; Time instruments; Pins being jewelry; Bracelets [jewellery, jewelry (Am.)]; Pendants; Decorative charms for cellular phones; Bracelets; Brooches [jewelry]; Diadems; Wedding rings; Rings [jewellery, jewelry (Am.)]; Necklaces [jewellery, jewelry (Am.)]; Semi-precious articles of bijouterie; Gems; Gold jewellery; Jewellery made from silver; Tie bars; Tie pins; Cuff links; Crosses [jewellery]; Lockets [jewellery, jewelry (Am.)]; Paste jewellery [costume jewelry (Am.)]; Earrings; Pearls [jewellery, jewelry (Am.)]; Beads for making jewelry; Lapel pins [jewellery]; Key rings [trinkets or fobs]; Rings [jewellery, jewelry (Am.)]; Jewellery, clocks and watches; Jewel chains; Signet rings; Jewelry for the head; Hat ornaments of precious metal; Medals; Shoe ornaments of precious metal; Wristwatches; Bracelets for watches; Chronoscopes; Timekeeping systems for sports; Identification bracelets [jewelry]; Works of art of precious metal; Jewelry boxes; Presentation caskets for clocks and watches; Presentation boxes for jewelry; Cases for horologicalronometric instruments; Jewelry boxes; Jewel cases.

Class 18: Leather products; Luggage, bags, wallets and other carriers; Umbrellas and parasols; Patio umbrellas; Patio umbrellas; Purses; Luggage label holders; Handbags; Vanity cases, not fitted; Trunks and travelling bags; Holdalls; Sports bags; Sport bags; Shoe bags; Daypacks; bags for sports clothing.

Class 25: Clothing; Headgear; Footwear; Baseball caps; Hats; Caps with visors; Sports headgear [other than helmets]; Children's headwear; Caps [headwear]; Headbands [clothing]; Sun hats; Sports caps; Beach hats; Thermal headgear; Bath slippers; Footwear for women; Ladies' boots; Leisure shoes; Rubbers (footwear); Gymnastic shoes; Running shoes; Infants' footwear; Boots for children; Running shoes; Athletics shoes; Training shoes; Yoga shoes; Swimming costumes; Swim wear for gentlemen and ladies; Trunks; Baby clothes; Layettes [clothing]; Children's wear; Clothing for horse-riding [other than riding hats]; Sportswear; Maternity clothing; Maillots; Ladies wear; Moisture-wicking sports shirts; Moisture-wicking sports pants; Moisture-wicking sports bras; Casualwear; Waist belts; Clothing for gymnastics; Scarves; Gloves [clothing]; Lingerie; Nightwear; Sports bras; Gym suits; Casual shirts; Sports pants; Sports jackets; Sports caps and hats; Sports socks; Singlets; Gym suits; Athletics vests; Tennis wear; Clothing for gymnastics; Heat-insulating clothing; Weatherproof clothing; Yoga shirts; Yoga pants; Running Suits.

2. European Union trade mark application No 15 104 904 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 104 904 , namely against some of the goods in Class 18 and against all the goods in Classes 14 and 25. The opposition is based on European Union trade mark registration No 6 298 798 ‘CARVEN’ (word mark). 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.

The goods

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

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, namely silver ornaments, rings, jewellery cases, earrings, cufflinks, bracelets, brooches, chains, necklaces, tie pins, tie clips; jewellery, horological and chronometric instruments; watch straps; trinkets; watch chains; chronometers; novelty key rings; watches, watch cases; alarm clocks.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes, namely hat boxes of leather, boxes of leather or leatherboard, school bags, card cases, key cases, travel bags, briefcases, purses; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; bags for campers; umbrella sticks; shooting sticks; vanity cases (not fitted); attaché cases; trolley cases with wheels; handbags; rucksacks, backpacks; beach bags; travelling bags; garment bags for travel; briefcases.

Class 25: Clothing for men, women and children; footwear, headgear; bathing suits, bathing trunks, bathing caps, bathrobes; bandanas (scarves); berets; shower caps; boots; underpants; caps; belts; shawls; sweaters; hats; socks; slippers, footwear; beach shoes; heelpieces for shoes; shirts, t-shirts; tights; underwear, corsets; suits; ties; mufflers; scarves; gloves; waistcoats; skirts; sports jerseys; coats; trousers; slippers; peignoirs; pullovers; dresses; pyjamas; briefs; henleys; jackets; suits; raincoats; articles of clothing made of leather; sports clothing.

The contested goods are the following:

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 14

Jewels; jewellery; jewellery boxes and watch boxes; presentation caskets for clocks and watches; presentation boxes for jewelry; cases for horologicalronometric instruments; jewelry boxes; jewelry boxes; jewel cases are identically contained in both lists of goods (including synonyms).

The contested pins being jewelry; bracelets [jewellery, jewelry (Am.)]; pendants; bracelets; brooches [jewelry]; diadems; wedding rings; rings [jewellery, jewelry (Am.)]; necklaces [jewellery, jewelry (Am.)]; semi-precious articles of bijouterie; gems; gold jewellery; jewellery made from silver; tie bars; tie pins; cuff links; crosses [jewellery]; lockets [jewellery, jewelry (Am.)]; paste jewellery [costume jewelry (Am.)]; earrings; pearls [jewellery, jewelry (Am.)]; lapel pins [jewellery]; rings [jewellery, jewelry (Am.)]; jewel chains; signet rings; jewelry for the head; medals; identification bracelets [jewelry] are included in the broad category of, or overlap with, the opponent’s jewellery. Therefore, they are identical.

The contested time instruments; clocks and watches; wristwatches; chronoscopes; timekeeping systems for sports are included in the broad categories of the opponent’s horological and chronometric instruments. Therefore, they are identical.

The contested bracelets for watches are synonymous with the opponent’s watch straps. Therefore, they are identical.

The contested hat ornaments of precious metal; shoe ornaments of precious metal overlap with the opponent’s silver ornaments, as the contested goods can be made of silver and the opponent’s goods cover all kinds of ornaments made of silver (not only for the hat and shoe industries). Therefore, the goods are identical.

The contested key rings [trinkets or fobs] include, as a broader category, the opponent’s novelty key rings. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested decorative charms for cellular phones are highly similar to the opponent’s novelty key rings. The goods under comparison are small, lightweight decorative accessories. The goods have a very similar purpose and nature. They can coincide in producer, end user and distribution channels.

The contested beads for making jewelry are similar to the opponent’s jewellery, as they can coincide in producer, end user and distribution channels.

Finally, the contested works of art of precious metal refer to ‘something produced or created by skill or craft’ (see Oxford English Dictionary). Consequently, they are similar to the opponent’s jewellery. The goods can have a similar nature and they can coincide in producer, end user and distribution channels.

Contested goods in Class 18

Leather products; umbrellas and parasols; purses; handbags; vanity cases, not fitted; trunks and travelling bags are identically contained in both lists of goods (including synonyms).

The contested daypacks are synonymous with the opponent’s backpacks and the contested luggage is synonymous with the opponent’s trunks. Therefore, these goods are identical.

The contested bags and other carriers include, as broader categories, the opponent’s travelling bags. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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

The contested holdalls, sports bags; sport bags; shoe bags; bags for sports clothing are highly similar to the opponent’s rucksacks and backpacks. The goods have the same purpose and nature. They can coincide in producer, end user and distribution channels.

The contested wallets are highly similar to the opponent’s card cases. The goods have the same purpose and nature. They can coincide in producer, end user and distribution channels.

The contested luggage label holders are similar to the opponent’s trunks. The goods are complementary and they can coincide in producer, end user and distribution channels.

Contested goods in Class 25

Clothing; headgear; footwear are identically contained in both lists of goods (including synonyms).

The contested baseball caps; hats; caps with visors; sports headgear [other than helmets]; children's headwear; caps [headwear]; sun hats; sports caps; beach hats; thermal headgear; sports caps and hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested bath slippers; footwear for women; ladies' boots; leisure shoes; rubbers (footwear); gymnastic shoes; running shoes; infants' footwear; boots for children; running shoes; athletics shoes; training shoes; yoga shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested headbands [clothing]; swimming costumes; swim wear for gentlemen and ladies; trunks; baby clothes; layettes [clothing]; children's wear; clothing for horse-riding [other than riding hats]; sportswear; maternity clothing; maillots; ladies wear; moisture-wicking sports shirts; moisture-wicking sports pants; moisture-wicking sports bras; casualwear; waist belts; clothing for gymnastics; scarves; gloves [clothing]; lingerie; nightwear; sports bras; gym suits; casual shirts; sports pants; sports jackets; sports socks; singlets; gym suits; athletics vests; tennis wear; clothing for gymnastics; heat-insulating clothing; weatherproof clothing; yoga shirts; yoga pants; running suits are included in the broad category of the opponent’s clothing for men, women and children. Therefore, they are identical.

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 (highly) similar are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. the hat and shoe industries).

The degree of attention may vary from average to high depending essentially on the price of the product and the frequency with which it is bought.

The signs

CARVEN

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘URSULA’ is meaningful in certain territories, for example, in those countries where German is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a word mark consisting of the element ‘CARVEN’ which has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark consisting of the verbal elements ‘URSULA KARVEN’ as well as a geometric element in the form of a stylised flower with six petals.

The element ‘URSULA’ of the contested sign will be understood as a female first name by the relevant public. The second element ‘KARVEN’ will be understood as a family name in this specific context (i.e. following the first name ‘URSULA’) even though it is not a common family name. The figurative element of the contested sign will be perceived as a stylised flower with six petals. As these elements are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

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). Consequently, the flower device in the contested sign has less of an impact on the consumer than the verbal elements ‘URSULA’ and ‘KARVEN’.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the string of letters ‘*ARVEN’. However, they differ in the letters ‘C’ / ‘K’ and the additional elements of the contested sign, namely the word ‘URSULA’ and the figurative element in the form of a flower.

Therefore, the signs are similar to an average degree.

Aurally, figurative elements have no impact and the pronunciation of the signs coincides in the two syllables ‘C/KAR-VEN’, present identically in both signs, because the letters ‘C’ and ‘K’ are pronounced in an identical way. The pronunciation differs in the syllables ‘UR-SU-LA' of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

Distinctiveness of the earlier mark

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

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 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.

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.

The goods are identical, (highly) similar or dissimilar. They are directed at the general public and at professionals, whose attention varies from average to high.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in 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 earlier mark enjoys a normal degree of distinctiveness per se.

In the contested sign, the two verbal elements ‘URSULA KARVEN’ have a stronger impact on the consumer than the flower device. Moreover, while the first name ‘URSULA’ is distinctive for the relevant goods, it is a common female first name so that the German-speaking public will focus their attention on the uncommon surname ‘KARVEN’.

In spite of the differences created by the additional word element ‘URSULA’ and the figurative element of the contested sign, there is a likelihood of confusion because of the important visual and aural coincidences in the verbal elements ‘CARVEN’ and ‘KARVEN’.

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 applicant claims that the applicant’s manager ‘Ursula Karven’ is a well-known German actress, writer, model and yoga instructor and filed evidence to support its claim (annexes A1 – A8). In this context the applicant argues that the applicant ‘has got name rights’.

The Opposition Division points out that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Furthermore, the applicant’s argument that it has a right to use its name is not valid in Opposition Proceedings, since it does not influence the issue of whether there is a likelihood of confusion.

Finally, the applicant argues that the figurative element of a flower is protected as a trade mark and it filed examples of use of the figurative component (annexes A9 – A12). However, these considerations are not relevant for the proceedings at hand regarding an application for a mark containing both verbal and figurative elements.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 298 798. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Julia SCHRADER

Beatrix STELTER

Swetlana BRAUN

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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