OPPOSITION No B 2 558 842

Felipe Domingo Asunción, Calle Dr. Cortezo, 8, 28012 Madrid, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Giorgio Armani S.P.A., Via Borgonuovo, 11, 20121 Milano, Italy (applicant), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 558 842 is partially upheld, namely for the following contested goods:

Class 18:

Handbags; travel baggage; card wallets [leatherware]; card cases of leather; leather credit card holders; wallets; file folders made of leather; key fobs made of leather; handbags; travel garment covers; make-up bags, not fitted; sports bags included in this class; athletics bags; evening bags and shoulder bags for men; shopping bags made of skin; school book bags; travel garment covers; shoe carriers for travel; beach bags; nappy bags; backpacks; Boston bags; travelling cases; canvas bags; overnight bags; trolleys; satchels; formal handbags; vanity cases (not fitted); chests and boxes of leather; leather pouches.

Class 25:

Coats; jackets [clothing]; trousers; skirts; tops; topcoats; waist belts; shoulder straps for clothing; gowns; topcoats; sweaters; denim jeans; gowns; cloaks; mackintoshes; parkas; shirts; undershirts; cardigans; underwear; baby doll nighties; robes; bathing wear; negligees; swimming costumes; robes; shawls; sashes for wear; neckties; neck ties; sweat shirts; knitwear; polo shirts; leotards; trousers shorts; footwear; slippers; covers for shoes; galoshes; clogs; boots; ski boots; ankle boots; espadrilles; sandals; bath sandals; gloves [clothing]; fingerless gloves; hats and caps; visors [hatmaking]; stocking suspenders; stockings; socks.

2.        European Union trade mark application No 13 826 623 is rejected for all 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 European Union trade mark application No 13 826 623. The opposition is based on Spanish trade mark registrations No 919 900 (4), No 2 244 284 (7) and No 2 244 285 (5). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Spanish trade marks No 919 900 (4), ‘LESAC’, and No 2 244 284 (7) and No 2 244 285 (5), both for ‘’.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 24/04/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 24/04/2010 to 23/04/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Class 18:	Handbags, purses, suitcases and wallets made from leather.
Class 25:	Ready-made clothing, footwear, headgear.
Class 35:	Retail sales services.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade marks for the goods and services in respect of which they are registered and on which the opposition is based.

On 26/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/04/2016 to submit evidence of use of the earlier trade marks. On 06/04/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, inter alia, the following:

• Item No 1: sworn statement issued and signed by Ms Pilar Martinez Carbonero, the only administrator of the company LESAC S.L. The breakdown of sales per year (2010 to 2014) and per broad product category is shown. Ms Martinez indicates that these sales correspond to the trade marks ‘LESAC’. The document was signed on 08/03/2015.

• Item No 2: invoices dated 2010, 2011, 2012, 2013 and 2014. In the invoices, the earlier trade marks do not appear in the details of the products sold; instead, the earlier marks are found in the header of the documents, namely in the company name LESAC S.L. Most of the invoices refer to the relevant goods (shoes, bags, handbags, purses, wallets, belts, scarves, and clothing such as shirts, dresses and skirts).

• Item No 4: printouts from the online shop on the opponent’s website www.lesac.es, dated March 2016. The earlier marks ‘LESAC’ are contained in the domain name (lesac.es).

The different sections of the online shop are demonstrated by the product categories, with different models and their prices also shown. The relevant products can be identified, namely handbags, purses and wallets, shoes and clothing.
In all cases, the earlier marks appear in the logo of the website and in some of the product labels, as follows:

• Item No 5: pictures dated within the relevant period (2014) showing the figurative mark ‘Lesac’.

• Item No 6: three advertisements in magazines:

• Guia Metropoli, dated 2012, presenting a retail shop named ‘LESAC’ and indicating its address, opening hours, etc. Reference is also made to the goods that are sold (shoes, handbags and clothing). The article also indicates the existence of four additional shops.
• Woman, dated May 2015, presenting a pair of shoes bearing the trade mark .
• MarieClaire, dated May 2015, showing a pair of sandals bearing the trade mark ‘Le Sac’.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent. To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

As far as the sworn statement of item No 1 is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The invoices, online shop printouts and advertisements show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros), the addresses in Spain and the domain (.es) of the opponent’s website and online shop. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period. The two advertisements from May 2015 fall outside it by only a few months.

Extent of use

Concerning the extent of the use made of the earlier marks, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, as well as the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).

Under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

Moreover, it should be noted that use need not have been made throughout the period of five years; any time within the five years is sufficient, as the provisions on use do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52).

The documents filed, namely the invoices, the online shop printouts and the sworn statement, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices submitted were issued between 2010 and 2014. The amounts referred to in the sworn statement and in the invoices for the goods and services in question provide sufficient information regarding the commercial volume of use and demonstrate that the use of the sign in Spain has been more than mere token use. Therefore, these documents prove the duration and frequency of use of the marks.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The proof of use must establish a clear link between the use of the mark and the relevant goods or services. As indicated in Rule 22(4) EUTMIR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T-105/13, TrinkFix, EU:T:2014:1070, § 28-38). A depiction of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

In the present case, the invoices include the company name LESAC S.L., and one of them, dated 21/11/2014, shows the earlier marks ‘LESAC’ in direct relation to the goods.

The applicant argues that earlier marks No 919 900 (4), ‘LESAC’, and No 2 244 284 (7) and No 2 244 285 (5), , for goods in Classes 25 and 35 have not been used and that the word ‘LESAC’ merely indicates the company name. It also argues that the sign that really identifies the opponent’s goods and services is , which is present in the majority of the evidence submitted.

In this regard, the Opposition Division deems that, even if, in principle, the use of the sign as a company name or trade name is not, of itself, intended to distinguish goods or services, the use of a business, company or trade name can be regarded as use ‘in relation to goods’. Moreover, in the present case, the use of the company name at the top of the invoices and on the website, depending on how the sign appears on them, may also be suitable to support genuine use of the registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 44-45).

Consequently, the Opposition Division considers that the evidence filed by the opponent is suitable to support genuine use of the aforementioned earlier marks, as it is possible to establish a link between the company name appearing in the invoices, the logo  appearing in the online shop printouts and on the product labels, and some of the goods in Classes 18 and 25, independent of the fact that the registered trade mark is used in combination with other elements.

In fact, the figurative depiction – consisting of a stylised letter ‘L’ inside a red circle above the stylised verbal element ‘LESAC’, along with some other decorative elements – of the registered word mark ‘LESAC’ constitutes an acceptable means of bringing the mark in question to the attention of the public and, consequently, does not affect the distinctiveness of the earlier marks, ‘LESAC’ and , which are registered as word and figurative marks for goods in Classes 18 and 25 and services in Class 35. In addition, the additional verbal element ‘St. Tropez 1964’ that appears at the bottom of the logo  merely designates or refers to the origin and year of the goods offered by the opponent or the establishment of the company or brand. This additional element is therefore not distinctive and, furthermore, is clearly subordinate to the verbal element ‘Lesac’. As such it does not alter the distinctive character of the registered trade marks (30/11/2009, T-353/07, Coloris, EU:T:2009:475, §§ 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

Therefore, the use of the earlier marks as described above constitutes use of the signs as trade marks in the course of trade and in a form differing in elements that do not alter the distinctive character of the marks in the form in which they were registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of earlier Spanish trade marks No 919 900 (4) and No 2 244 284 (7) during the relevant period in the relevant territory for the following goods:

Class 18:	Handbags and purses made from leather.
Class 25:	Ready-made clothing, footwear.

However, as regards earlier Spanish trade mark No 2 244 285 (5), it must be noted that simply the sale of goods is not a service within the meaning of the Nice Classification. A fortiori, the direct sale of one’s own goods is not a service per se either, and the invoices and sales figures contained in the sworn statement prove the use of the marks only in relation to the goods that are being sold.

The evidence submitted indicates that the company sells goods, under the brands seen above, directly to consumers via retail shops and its own online shop. This does not constitute retail services (the bringing together of a variety of goods for the benefit of others), but rather constitutes use of the trade marks for the goods in question, since the simple sale of one’s own goods is not a service, as explained above.

Therefore, the Opposition Division considers that the evidence submitted is not sufficient to prove the use of Spanish trade mark registration No 2 244 285 (5) for retail sales services.

Consequently, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to examine the opposition in relation to the opponent’s Spanish trade mark registrations No 919 900 (4) and No 2 244 284 (7) simultaneously.

1. The goods

The goods on which the opposition is based, and in relation to which genuine use of the earlier mark has been established, are the following:

1. Spanish trade mark registration No 919 900 (4)

Class 18:

Handbags and purses made from leather.

2. Spanish trade mark registration No 2 244 284 (7)

Class 25:

Ready-made clothing, footwear.

The contested goods are the following:

Class 18:

Handbags; travel baggage; card wallets [leatherware]; card cases of leather; leather credit card holders; wallets; file folders made of leather; key fobs made of leather; handbags; travel garment covers; make-up bags, not fitted; sports bags included in this class; athletics bags; evening bags and shoulder bags for men; shopping bags made of skin; school book bags; travel garment covers; shoe carriers for travel; beach bags; nappy bags; backpacks; Boston bags; travelling cases; canvas bags; overnight bags; trolleys; satchels; formal handbags; vanity cases (not fitted); leather; chests and boxes of leather; leather pouches; harness made from leather; umbrellas; leather leashes.

Class 25:

Coats; jackets [clothing]; trousers; skirts; tops; topcoats; waist belts; shoulder straps for clothing; gowns; topcoats; sweaters; denim jeans; gowns; cloaks; mackintoshes; parkas; shirts; undershirts; cardigans; underwear; baby doll nighties; robes; bathing wear; negligees; swimming costumes; robes; shawls; sashes for wear; neckties; neck ties; sweat shirts; knitwear; polo shirts; leotards; trousers shorts; footwear; slippers; covers for shoes; galoshes; clogs; soles for footwear; shoe uppers; boots; ski boots; ankle boots; espadrilles; sandals; bath sandals; gloves [clothing]; fingerless gloves; hats and caps; visors [hatmaking]; stocking suspenders; stockings; socks.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 contested handbags (appearing twice) includes, as broader category, the opponent’s handbags made from leather. 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 evening bags and shoulder bags for men; Boston bags; satchels; overnight bags; formal handbags are included in the broad category of, or overlap with, the opponent’s handbags and purses made of leather. Therefore, they are identical.

The contested travel baggage; travel garment covers (included twice); make-up bags, not fitted; sports bags included in this class; athletics bags; shopping bags made of skin; school book bags; shoe carriers for travel; beach bags; nappy bags; backpacks; travelling cases; canvas bags; trolleys; vanity cases (not fitted); chests and boxes of leather; leather pouches are all luggage, bags, cases or carriers. Their purpose is to store stuff mainly for carrying it, travelling, transport or keeping it safe. As such they have the same or similar purpose as the opponent’s handbags and purses made of leather. They are commercialised in the same distribution channels and target the same relevant public. Moreover, they are or can be also made of leather and might come from the same providers. Therefore they are similar.

Certain other goods stated in the applicant’s specification are complementary to the opponent’s goods or at least used commonly in combination insofar as the contested goods can form part of, be attached to or be used to secure the closure of, or to assist in carrying or be carried inside the opponent’s handbags and purses made of leather. These contested goods are card wallets [leatherware]; card cases of leather; leather credit card holders; wallets; file folders made of leather; key fobs made of leather. It is likely that the end users, the origin and the distribution channels and sales outlets of these goods will be the same. Therefore, these goods are similar.

The contested leather are raw materials and refer to the skins of various kinds of animals (or imitations thereof). The fact that one product is used for manufacturing another (for example, leather for handbags) 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 abovementioned leather is intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s handbags and purses made of leather of Class 18 and ready-made clothing, footwear of Class 25. Therefore, these goods are dissimilar.

The contested leather leashes are used for leading or restraining an animal. The contested harness made from leather are a set of straps and fittings by which a horse draught animal is fastened to a cart, plough, etc. and is controlled by its driver. These goods are not related to the opponent’s goods. They have a different nature and purpose. Furthermore, they are normally manufactured by different companies and are commercialised through different trade channels. Therefore, they are dissimilar from the opponent’s handbags and purses made of leather of Class 18 and ready-made clothing, footwear of Class 25.

The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod. The nature of these products is very different from that of the opponent’s goods. They serve very different purposes, and are usually manufactured by different companies. Therefore, these products are dissimilar from the opponent’s handbags and purses made of leather of Class 18 and ready-made clothing, footwear of Class 25.

Contested goods in Class 25

The contested coats; jackets [clothing]; trousers; skirts; tops; topcoats (appearing twice); waist belts; shoulder straps for clothing; gowns (appearing twice); sweaters; denim jeans; cloaks; mackintoshes; parkas; shirts; undershirts; cardigans; underwear; baby doll nighties; robes; bathing wear; negligees; swimming costumes; robes (appearing twice); shawls; sashes for wear; neckties; neck ties; sweat shirts; knitwear; polo shirts; leotards; trousers shorts; gloves [clothing]; fingerless gloves; stocking suspenders; stockings; socks belong to the broader opponent’s category of ready-made clothing. They are therefore identical.

Footwear is identically contained in both lists of goods.

The contested slippers; covers for shoes; galoshes; clogs; boots; ski boots; ankle boots; espadrilles; sandals; bath sandals are included in the opponent’s broader category of footwear. They are identical.

The contested hats and caps; visors [hatmaking] are similar to the opponent’s footwear since they can be manufactured by the same companies, can coincide in purpose and target the same relevant public via the same or common distribution channels.

The contested soles for footwear; shoe uppers are all integral parts or fittings of footwear. The mere fact that they are made of leather or that are used to manufacture final products in Class 25 is not sufficient to render them similar. They do not target the same consumers; do not have the same distribution channels and commercial origins as they are usually aimed at undertakings that manufacture the end product, and not at the general public. Furthermore, they are not complementary or in competition with one another. Consequently, they are dissimilar to all the opponent’s goods in Classes 18 and 25.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

(1) LESAC
(2)
Earlier trade marks	Contested sign

The relevant territory is Spain.

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 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 contested sign consists of the words verbal elements ‘GIORGIO ARMANI’ on top, written in a standard black font using capital letters, followed immediately below and in bigger size by the verbal element ‘le Sac’, highly stylised and written in hand script using black typeface. These two elements are followed by the number ‘11’ depicted below using a standard black font.

The earlier registered trade marks that have to be compared to the contested sign are the word ‘LESAC’ and the figurative signs ‘’ and not the sign ‘’ contrary to the argument of the applicant.

The verbal element ‘GIORGIO ARMANI’ on the contested sign will be understood by the relevant public as a first name and surname of Italian origin. This element is consequently, distinctive.

Despite the claim of the applicant, the Opposition Division considers that French is not generally understood by the general public in the relevant territory (Spain). Therefore, the word elements ‘le Sac’ of the contested sign don’t have a meaning for the relevant public and this element is consequently, distinctive.

The element ‘11’ of the contested sign will be associated with the number it designates by the relevant public. As it has no relation with the relevant goods, it is also distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements despite the fact that the element ‘le Sac’ is larger in size than the other elements.

Visually, the signs coincide in the word elements ‘LE SAC’ present identically in all of the signs: as a single word in the earlier marks and as two words in the contested sign. However, they differ in the verbal element ‘GIORGIO ARMANI’ and in the element ‘11’ not present in the earlier marks. The signs also differ in their slight stylisation.

Even though the additional elements ‘GIORGIO ARMANI’ and ‘11’ in the contested sign create some visual differences between the signs, the earlier mark (1) and the verbal element of earlier mark (2) are completely reproduced as an element which is central and in higher size that the other elements in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛LE-SAC’, present identically in all of the signs. The pronunciation differs due to the verbal element ‘GIORGIO ARMANI’ and the element ‘11’ (i.e. /once/) of the contested sign, which have no counterpart in the earlier marks.

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

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘GIORGIO ARMANI’ and ‘11’, of the contested sign, will be associated with the meanings explained above. To that extent, the signs are conceptually not similar.

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 marks 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 any of its marks is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

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/services covered are from the same or economically linked undertakings.

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).

The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. The degree of attention of the consumer when purchasing them is average, and account is also 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). Both of the earlier marks have a normal degree of distinctiveness.

The signs are visually similar to an average degree; aurally they are also similar to a low degree. This is on account of the elements ‘lesac’ and ‘le Sac’, which are distinctive elements and make up the totality of the earlier marks. This is a factor that has to be considered in the assessment of likelihood of confusion.

It is also important to consider that the goods themselves are fairly ordinary consumer products that are commonly purchased in establishments or shops where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). This fact also constitutes a relevant factor that needs to be weighed up in the assessment of likelihood of confusion.

Conceptually they are not similar due to the presence of the additional elements ‘GIORGIO ARMANI’ and ‘11’. However, as it is common practice in the fashion industry, the name ‘GIORGIO ARMANI’ will be perceived by a substantial part of the relevant public as an indication of a person who is responsible for designing or manufacturing the products. Therefore, although this element has its own independent distinctive role in the contested sign, consumers are likely to focus more on the other element that will be seen as identifying the specific product line, namely ‘le Sac’, than on the element that would be perceived as identifying the designer.

Indeed, the Opposition Division considers that it cannot be safely excluded that a part of the relevant public might perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49), for instance, as a sub-brand or specific product line designed by ‘GIORGIO ARMANI’ coded with the number ‘11’.

Both parties refer to previous decisions of the Office to support their arguments, especially as regards the comparison and similarity between the signs. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to, especially by the applicant, are not relevant to the present proceedings, as the assumption of the presence of a weak or descriptive element in the signs is of utmost importance and totally changes the situation as regards the comparison of the signs. Be that as it may, this point has been duly considered in section c) by the Opposition Division.

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 Spanish trade mark registrations No 919 900 (4) and No 2 244 284 (7).

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

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.

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

Rasa BARAKAUSKIENE

Fabián GARCIA QUINTO

Ana MUÑIZ RODRIGUEZ

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.