OPPOSITION No B 2 759 135

Glitterbest Limited, 20 Jesmond Way, Stanmore, Middlesex HA7 4QR, United Kingdom (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, London,  EC2N 2DG, United Kingdom (professional representative)

a g a i n s t

Pantarei, Via Domodossola 17, 20145 Milano, Italy (applicant), represented by Dott. Franco Cicogna & C. Srl, Via Visconti di Modrone 14/A, 20122 Milano, Italy (professional representative).

On 23/08/2016, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 759 135 is upheld for all the contested goods.

2.        European Union trade mark application No 15 458 821 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 458 821 ‘GOD SAVE THE FASHION‘. The opposition is based on, inter alia, European Union trade mark registration No 10 643 567 ‘GOD SAVE THE QUEEN‘. The opponent invoked, in relation to the EUTM referred to, Article 8(1)(b) and 8(5) 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 643 567.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; umbrella covers; whips, harness and saddlery; belts; bands and straps of leather; key fobs of leather; handbags; rucksacks; clothing, covers, leashes and leads for animals; bags and containers made of leather; boxes made of leather; backpacks; school bags; satchels; duffel bags; boot bags; attaché cases and brief cases; key cases; holdalls; wallets; credit card holders; belts for luggage; shoulder belts; luggage tags; parts and fittings for all of the aforesaid goods.

The contested goods are the following:

Class 18:        Bags.

Class 25:        Clothing.

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 bags include, as a broader category, the opponent’s handbags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 25

The contested clothing in Class 25 is used to cover parts of the human body and protect them against the elements. Clothing represents also articles of fashion.

The opponent’s handbags in Class 18 are related to the contested clothing in Class 25 because consumers are likely to consider handbags as accessories that complement articles of clothing as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market related accessories such as handbags. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered 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 will be average.

3. The signs

GOD SAVE THE QUEEN	GOD SAVE THE FASHION
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 common elements ‘GOD SAVE THE’ are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the public in the United Kingdom, Ireland or Malta.

The elements ‘GOD SAVE’ of both marks will be understood by the relevant public as an English expression, consisting of an exclamation asking God (i.e. the creator and ruler of the universe in certain religions) to protect or rescue somebody or something. The element ‘THE’ of both marks will be understood as an English definite article. As these elements have no relation to the relevant goods, they are distinctive.

The element ‘QUEEN’ is the English word used to refer to a woman that rules a country as a monarch, and as such it will be understood by the relevant public. As this element has no relation to the relevant goods, it is distinctive.

The element ‘FASHION’ of the contested sign is the English word used to refer to the area of activity that involves styles of clothing and appearance. Bearing in mind that the relevant goods are fashion articles, this element is non-distinctive for all the contested goods, as claimed by the opponent.

The opponent also referred in its arguments to the fact that consumers are more used to remembering and paying more attention to the beginnings of the marks. In this regard, the Opposition Division notes that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in their first three elements ‘GOD SAVE THE’. The marks also have the same structure (four words) and a similar length (fifteen and seventeen letters, respectively). However, they differ in their last word ‘QUEEN’/’FASHION’, although the very last letter, ‘N’, is the same.

The visual impact of the differing elements referred to on likelihood of confusion is reduced in the present case for the different reasons described in detail in the previous sections (e.g. their less visual impact being positioned at the end of the signs and lack of distinctive character of the differing word in the contested sign). 

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GOD SAVE THE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘QUEEN’/’FASHION’, although the very last letter, ‘N’, sounds the same.

Once again, the aural impact of the differing elements referred to on likelihood of confusion is reduced in the present case for the different reasons described in detail in the previous sections (e.g. being read and pronounced in the last place, and  lack of distinctive character of the differing word in the contested sign). 

Therefore, the signs are aurally similar to, at least, an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to, at least, an average 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.

According to the opponent, the earlier mark is reputed 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.

5. Global assessment, other arguments and conclusion

The goods have been found partially identical and partially similar. The earlier trade mark’s degree of distinctiveness per se is average and the degree of attention of the relevant public is average as well.

The marks totally coincide visually, aurally and conceptually in their beginnings ‘GOD SAVE THE’ and differ only in their final words ‘QUEEN’/’FASHION’. However, as explained above, the impact of the differing elements referred to on likelihood of confusion is reduced in the present case for the different reasons described in detail in the previous sections (e.g. their less visual impact being positioned at the end of the signs and lack of distinctive character of the differing word in the contested sign). On the whole, the similarities between the marks clearly prevail and the overall impression created by the marks is, therefore, similar to, at least, an average degree.

Considering all the above, there is a likelihood of confusion on the part of the English-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. The relevant public is likely to perceive the contested sign as a modification of the earlier trade mark based on the same initial phrase ‘GOD SAVE THE …’.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 643 567. 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.

As the earlier EUTM No 10 643 567 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) and 8(4) EUTMR.

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

María del Carmen SUCH SÁNCHEZ

Vít MAHELKA

Saida CRABBE

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.