OPPOSITION No B 2 758 228

Beverly Hills International Limited, Unit 14B Roman House Red Lion Business Centre Burnham Road, Latchingdon, Essex CM3 6JH, United Kingdom (opponent), represented by Withers & Rogers LLP, 4 More London Riverside, London  SE1 2AU, United Kingdom (professional representative)

a g a i n s t

SC Vetro Design Srl, Str. Veronica Micle, nr. 20, bl. M6, sc. B, ap. 72, sector 1, Bucharest, Romania (applicant), represented by SC Rompatent Design Srl, Radu Borlan, Strada Matei Voievos 115-223 Bloc O2, Scara C, etaj 5, Ap. 112, 021453 Bucharest, Sector 2, Romania (professional representative).

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

DECISION:

1.        Opposition No B 2 758 228 is upheld for all the contested goods, namely:

Class 25: Footwear, clothing, headgear.

2.        European Union trade mark application No 15 291 685 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 of European Union trade mark application No 15 291 685 , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 11 312 287 ‘PRIMA’. 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 25: Articles of clothing for men and boys.

The contested goods are the following:

Class 25: Footwear, clothing, headgear.

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.

As a preliminary remark, it should be mentioned that in its observations, the applicant claims that it offers a special category of clothing, footwear and headgear for medical staff, health care workers and specialised caregivers, different from the opponent’s goods. However, the Opposition Division notes that the list of the applicant’s goods has not been limited during the proceedings, and that the comparison of goods is made on the basis of the goods from the applicant’s and the opponent’s specifications. Therefore, the applicant’s claim must be set aside.

The contested clothing includes, as a broader category, the opponent’s articles of clothing for men and boys. 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 footwear and headgear serve the same purpose as clothing: all 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 and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce clothing, footwear and headgear. Therefore, the contested footwear and headgear, and the opponent’s articles of clothing for men and boys 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 are directed at the public at large. The degree of attention of the relevant public is considered to be average.

3. The signs

PRIMA
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

The element ‘PRIMA’ is the only element of the earlier word mark. For the relevant Spanish consumer the word ‘prima’ means ‘female cousin’ or ‘bonus payment’. Since it has no relation to the relevant goods, it has an average degree of distinctiveness (see also 22/06/2017, R-1933/2016-4, PRIMART Marek Łukasiewicz (fig.) / PRIMA et al., § 27; 12/07/2016, R-1619/2015-4, Primal Food/PRIMA, § 48, 52; 08/03/2016, R-0028/2015-4, PRIMAWELL/PRIMA, § 53, 18/09/2013, R-0283/2012-4 and R-0312/2012-4, PRIMAFLOR/PRIMA, § 68).

The contested mark is a figurative mark. It contains a verbal element ‘PRIMA’ written in quite standard bold uppercase typeface. The above considerations in relation to the semantic content and the distinctiveness of the word ‘PRIMA’ equally apply in relation to the contested sign. Furthermore, the registered trade mark symbol, ®, placed next to the word element ‘PRIMA’, is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, it will not be taken into consideration for the purposes of comparison. Finally, the figurative element represents a rainbow and will be perceived as such by the relevant Spanish public. Since it has no relation to the relevant goods, its distinctiveness is considered to be average.

The Opposition Division recalls that 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). Therefore, the verbal element of the contested mark is considered to have a greater impact on the consumers than the figurative device.

Given the size and position of the word ‘PRIMA’ and the rainbow device, it is considered that the contested mark has no element that could be considered clearly more dominant.

Visually, the signs coincide in the word element ‘PRIMA’, which is the only element of the earlier word mark and the only verbal element of the contested sign. The signs differ in a slight stylisation of the word element and the figurative device of the contested sign.

Therefore, taking into account that the verbal element in the contested sign has a stronger impact than the figurative device, the signs are considered visually highly similar.

Aurally, since the figurative element of the contested sign will not be pronounced, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the concept(s) of the word element ‘PRIMA’, while the contested mark contains an additional concept of a rainbow represented by the figurative device.

Since the figurative element has a lesser impact on the consumers that the word element, the signs are considered to be conceptually similar to a high 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.

5. Global assessment, other arguments and conclusion

The goods at issue are partly identical and partly similar. They target the general public whose degree of attention is average.

The inherent distinctiveness of the earlier mark is normal.

The signs are visually and conceptually highly similar and aurally identical on account of the coinciding word ‘PRIMA’ which constitutes the entire earlier mark and the only verbal element of the contested sign.

The differences between the signs are limited to a slight stylisation of the verbal element of the contested sign, likely to be overlooked by the public, and the additional figurative device which has, however, a lesser impact on the consumers.

Consequently, the similarities between the signs are sufficient to counteract the differences between them. Taking into account an imperfect recollection of the signs, it is clear that there is a risk that the relevant Spanish-speaking public may confuse the origin of the conflicting goods.

Indeed, in the present case, consumers may legitimately believe that the contested trade mark is a new stylised version or a brand variation of the earlier mark, coming from the same undertaking or from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 trade mark registration No 11 312 287 ‘PRIMA’. It follows that the contested trade mark must be rejected for all the contested goods.

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

Cynthia DEN DEKKER

Zuzanna STOJKOWICZ

Carmen SÁNCHEZ PALOMARES

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.