OPPOSITION No B 2 498 452

Celine, 16 rue Vivienne, 75002 Paris, France (opponent), represented by Caroline Main, Société Louis Vuitton Services, 2 rue du Pont-Neuf, 75001 Paris, France (employee representative)

a g a i n s t

Xuyan Mei, C/ Progrés, 350, 08918 Badalona, Spain (applicant), represented by
R. Volart Pons y Cia., S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 498 452 is partially upheld, namely for the following contested goods and services:

Class 18: Hand bags; Pouches; Pocket wallets and school bags; Cases for toiletries and for keys; Leather goods; Trunks; Baggage; Satchels; Coin purses; Coin holders; Card cases (notecases); Baggage.

Class 25: Clothing for men, women and children (except stockings, underwear, lingerie and swimsuits); Trousers, suit jackets, suits; Uniforms; Pullovers, Jerseys (clothing); Sweatsuits, Belts (clothing); Leather belts [clothing]; Pyjamas; Tee-shirts; Dressing gowns; Bath robes; Shirts; Gloves of clothing; Clothing for gymnastics; Peaked caps, caps; Headgear; Footwear; Sports and beach footwear; Ankle boots; Sandals; Slippers; Articles of clothing made from leather or imitation leather.

Class 35: Wholesaling and retailing via global computer networks of clothing for men, women and children, suits, jackets, trousers, uniforms, socks and tights, lingerie, sweaters, jerseys (clothing), sweatshirts, belts, pyjamas, T-shirts, underwear, dressing gowns, bath robes, shirts and bodices (lingerie), gloves (clothing), swimsuits, gymnastic clothing, swimming trunks, bikinis, hats and caps, headgear, footwear, sports and beach footwear, ankle boots, sandals, trainers, leather and imitations of leather, clothing of leather and imitations of leather, belts and straps of leather, bags and handbags, pocket wallets and school satchels, cases for toiletries and keys (leatherware), trunks and travelling bags, school backpacks, coin purses, card cases (notecases), suitcases, animal skins, hides, umbrellas and parasols, walking sticks, whips, harness and saddlery.

2.        European Union trade mark application No 13 425 889 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 425 889 for the figurative mark ‘’. The opposition is based on European Union trade mark registration No 3 977 063 for the word mark ‘CELINE’ and European Union trade mark registration No 12 086 674 for the figurative mark ‘’. The opponent invoked Article 8(1)(b) EUTMR and, in relation to earlier European Union trade mark registration No 3 977 063 also Article  8(5) EUTMR.

PROOF OF USE OF EARLIER EUROPEAN UNION TRADE MARK REGISTRATION NO 3 977 063

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 European Union trade mark registration No 3 977 063.

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

The contested application was published on 22/12/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 22/12/2009 to 21/12/2014 inclusive.

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

Class 18:        Leather and imitations of leather; travelling bags, travelling sets (leatherware), trunks and travelling bags, garment bags for travel, vanity cases (not fitted), rucksacks, shoulder bags, handbags, attaché-cases and briefcases of leather, pouches, wallets, purses, key cases, card holders; umbrellas.

Class 25:        Clothing and underwear, including sweaters, shirts, T-shirts, lingerie, belts (clothing), headscarves, neckties, shawls, waistcoats, skirts, waterproof clothing, overcoats, braces, trousers, jeans, pullovers, dresses, jackets, scarves, gloves, tights, socks, swimsuits, bathrobes, pyjamas, nightgowns, shorts, pouches (clothing); shoes, boots, slippers; headgear.

The term ‘including’, used in the opponent’s list of goods in Class 25, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see by analogy on the use of ‘in particular’ a reference in the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 05/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/01/2016 to submit evidence of use of the earlier trade mark. Upon request of the opponent this time limit was extended until 10/03/2016. On 09/03/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep the data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms.

The evidence to be taken into account is the following:

• ‘Saga Celine’ by the Press Office of CELINE, describing the history of brand for fashion items such as clothing, shoes, bags.
• Extract of the website of Vogue regarding the history of Céline, describing the history of brand for fashion items such as clothing, shoes, bags.
• Screenshots from ‘CELINE’s official website www.celline.com/en showing ‘CÉLINE’s products (including clothing, shoes, bags) and CELINE’s retail outlets in the European Union.  
• A document with information concerning the number of visits 2012-2015 on the CELINE’s official website www.celine.com/en. The document is undated and its origin is unclear.
• Extracts from catalogues ‘CELINE’ (also written ‘CÉLINE’), dated spring 2009, 2009-2010, spring 2011, winter 2011-2012, summer 2012, winter 2013-2014 and extract concerning the accessories dated fall 2013. They show the following goods being the basis of opposition: clothing items, shoes, boots, travelling bags, shoulder bags, handbags and pouches.
• Numerous copies of press clippings. They contain advertisements or articles with pictures concerning ‘CELINE’ goods such as clothing, shoes, boots, handbags, shoulder bags, travelling bags and pouches.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). As explained by the opponent, the relevant parts of the documents (e.g. the titles of articles and of some articles or their parts) are translated or are self-explanatory (e.g. pictures). Therefore, the Opposition Division considers that there is no need to request a translation. Likewise, even if the text of some documents is not entirely legible, the relevant parts (such as titles of the articles or their relevant parts) can be read.  

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 for which the earlier mark is 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.

The applicant also claims that part of the documentation is undated or its source does not clearly transpire from the evidence itself. Indeed, some pieces of evidence contain electronic images of extracts from articles reproduced on separate sheets with dates or sources at the top or at the bottom of a sheet which makes it unclear as to whether they were added. However, there are also images of excerpts from publications which themselves contain visible dates and sources (e.g. from Harper’s Bazaar, dated July 2009 and January 2010, Guide du Figaro, 26/11/2009, Vogue, dated 2011, Il Giornale, dated 01/10/2012, The Times, dated October 2012 and 02/10/2013, The Fashion Business Drapers (article dated 12/10/2013); Evening Standard, dated 01/10/2013, The Independent (article dated 29/09/2013); The Guardian, dated 02/10/2013 and 04/03/2013, article from www.purseblog.com, dated 6/11/2014 and referring to Céline’s spring 2015 handbag; article in The Guardian, dated 28/09/2013, printed from www.theguardian.com; article printed from www.vogue.com, dated 28/09/2014 and referring to Céline spring 2015 ready-to-wear collection) or contain references to the use of the trade mark within the relevant period (e.g. dates contained within the articles).

The evidence shows that the place of use is the European Union. This can be inferred from the language of the documents (English, French and Italian), the currency mentioned in the catalogues and in press clippings (‘EUR’, ‘GBP’) and some addresses in France, United Kingdom, Italy, Germany, the Netherlands, Greece, mentioned in the catalogues.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use 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. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

As regards the extent of the use made of the earlier mark, although the opponent did not submit invoices or other evidence attesting sales figures, a large number of press clippings, constituting sources of independent information, as well as catalogues with a large number of items offered under the earlier mark and advertising in the press demonstrated that that trade mark had been the subject of real and genuine commercial exploitation on the market during the relevant period.

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

The evidence shows that the mark has been used as 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, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods:

Class 18:        Travelling bags, shoulder bags, handbags, pouches.

Class 25:        Clothing; shoes, boots.

Therefore, 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.

1. The goods and services

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

1. EUTM 3 977 063:

Class 18:        Travelling bags, shoulder bags, handbags, pouches.

Class 25:        Clothing; shoes, boots.

2. EUTM 12 086 674:

Class 35: Retailing in shops or online of perfumery and cosmetics, clothing, footwear, headgear, leatherware, optical goods, jewellery, watches, luggage, textile articles, household linen; Presentation of goods on communication media, for retail purposes, namely perfumery and cosmetics, clothing, footwear, headgear, leatherware, optical goods, jewellery, watches, luggage, textile articles, household linen.

The contested goods and services are the following:

Class 18: Leather and his/her imitations; Laces (Leather -); Hand bags; Pouches; Pocket wallets and school bags; Cases for toiletries and for keys; Leather goods; Trunks; Baggage; Satchels; Coin purses; Coin holders; Card cases (notecases); Baggage; Animal skins, hides; Umbrellas; Parasols; Walking sticks; Whips, harness and saddlery.

Class 25: Clothing for men, women and children (except stockings, underwear, lingerie and swimsuits); Trousers, suit jackets, suits; Uniforms; Pullovers, Jerseys (clothing); Sweatsuits, Belts (clothing); Leather belts [clothing]; Pyjamas; Tee-shirts; Dressing gowns; Bath robes; Shirts; Gloves of clothing; Clothing for gymnastics; Peaked caps, caps; Headgear; Footwear; Sports and beach footwear; Ankle boots; Sandals; Slippers; Articles of clothing made from leather or imitation leather.

Class 35: Wholesaling and retailing via global computer networks of clothing for men, women and children, suits, jackets, trousers, uniforms, socks and tights, lingerie, sweaters, jerseys (clothing), sweatshirts, belts, pyjamas, T-shirts, underwear, dressing gowns, bath robes, shirts and bodices (lingerie), gloves (clothing), swimsuits, gymnastic clothing, swimming trunks, bikinis, hats and caps, headgear, footwear, sports and beach footwear, ankle boots, sandals, trainers, leather and imitations of leather, clothing of leather and imitations of leather, belts and straps of leather, bags and handbags, pocket wallets and school satchels, cases for toiletries and keys (leatherware), trunks and travelling bags, school backpacks, coin purses, card cases (notecases), suitcases, animal skins, hides, umbrellas and parasols, walking sticks, whips, harness and saddlery; Advertising, online advertising on a computer network; Arranging exhibitions and trade fairs for commercial purposes; Business management; Business administration; Office functions; Business advice relating to franchising.

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

The term ‘namely’, used in the opponent’s list of services in Class 35 to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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 hand bags; pouches are identically contained in the opponent’s list of goods in Class 18.

The contested pocket wallets and school bags; cases for toiletries and for keys; coin purses; coin holders; satchels; card cases (notecases) are similar to the opponent’s handbags. All these goods are used to carry other items. Furthermore, they can coincide in their manufacturers, distribution channels and the relevant public.

The contested leather goods are similar to a low degree to the opponent’s handbags which may also be made of leather and thus their nature, purpose and relevant public may coincide.

The contested trunks are large packing cases or boxes that clasp shut, used as luggage or for storage. These goods share much of the same purpose as the opponent’s travelling bags, namely to carry or store objects, target the same relevant public and may also be sold through the same distribution channels. Therefore, they are similar.

The contested baggage (listed twice) includes, as a broader category, the opponent’s travelling bags. The Opposition Division cannot dissect ex officio the broad category of the applicant’s goods. Therefore, the goods are considered identical.

The contested leather and his/her imitations; animal skins and hides in Class 18 refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for shoes) 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 raw materials in Class 18 are 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 bags, pouches, clothing or shoes. Therefore, these goods are dissimilar.

The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; walking sticks are canes or other staffs used as aids for walking; whips are instruments used for driving animals; harnesses are the gear or tackle with which a draft animal pulls a vehicle or implement; and saddlery is equipment for horses, such as saddles and harnesses. The nature of these goods is very different from that of the opponent’s goods in Classes 18 and 25. They serve very different purposes (protection from rain/sun, assistance with walking, aid in the control and/or riding of animals, versus carrying goods or covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

Likewise, the contested laces (leather -) do not satisfy the same needs as the opponent’s goods. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are not in competition. Therefore, they are dissimilar.

The contested leather and his/her imitations; laces (leather -); animal skins, hides; umbrellas; parasols; walking sticks; whips, harness and saddlery are also dissimilar to the opponent’s services. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

Contested goods in Class 25

The contested clothing for men, women and children (except stockings, underwear, lingerie and swimsuits); trousers, suit jackets, suits; uniforms; pullovers, jerseys (clothing); sweatsuits, belts (clothing); leather belts [clothing]; pyjamas; tee-shirts; dressing gowns; bath robes; shirts; gloves of clothing; clothing for gymnastics; articles of clothing made from leather or imitation leather are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear; sports and beach footwear; sandals; slippers are included in the broad category of the opponent’s shoes. Therefore, they are identical.

The contested ankle boots are included in the broad category of the opponent’s boots. Therefore, they are identical.

Headgear and clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, the contested peaked caps, caps; headgear and the opponent’s clothing are considered similar.

Contested services in Class 35

The contested retailing via global computer networks of clothing for men, women and children, suits, jackets, trousers, uniforms, socks and tights, lingerie, sweaters, jerseys (clothing), sweatshirts, belts, pyjamas, T-shirts, underwear, dressing gowns, bath robes, shirts and bodices (lingerie), gloves (clothing), swimsuits, gymnastic clothing, swimming trunks, bikinis, clothing of leather and imitations of leather, belts of leather are included in the broad category of the opponent’s retailing in shops or online of clothing. Therefore, they are identical.

The contested retailing via global computer networks of hats and caps, headgear are included in the broad category of the opponent’s retailing in shops or online of headgear. Therefore, they are identical.

The contested retailing via global computer networks of footwear, sports and beach footwear, ankle boots, sandals, trainers are included in the broad category of the opponent’s retailing in shops or online of footwear. Therefore, they are identical.

The contested retailing via global computer networks of leather and imitations of leather, straps of leather, bags and handbags, pocket wallets and school satchels, cases for toiletries and keys (leatherware), trunks and travelling bags, school backpacks, coin purses, card cases (notecases), suitcases, animal skins, hides, umbrellas and parasols, walking sticks, whips, harness and saddler are considered similar to the opponent’s retailing in shops or online of perfumery and cosmetics, clothing, footwear, headgear, leatherware, optical goods, jewellery, watches, luggage, textile articles, household linen. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. 

The contested wholesaling via global computer networks of clothing for men, women and children, suits, jackets, trousers, uniforms, socks and tights, lingerie, sweaters, jerseys (clothing), sweatshirts, belts, pyjamas, T-shirts, underwear, dressing gowns, bath robes, shirts and bodices (lingerie), gloves (clothing), swimsuits, gymnastic clothing, swimming trunks, bikinis, hats and caps, headgear, footwear, sports and beach footwear, ankle boots, sandals, trainers, leather and imitations of leather, clothing of leather and imitations of leather, belts and straps of leather, bags and handbags, pocket wallets and school satchels, cases for toiletries and keys (leatherware), trunks and travelling bags, school backpacks, coin purses, card cases (notecases), suitcases, animal skins, hides, umbrellas and parasols, walking sticks, whips, harness and saddlery are considered similar to the opponent’s retailing in shops or online of perfumery and cosmetics, clothing, footwear, headgear, leatherware, optical goods, jewellery, watches, luggage, textile articles, household linen. The services at issue have the same or similar nature since both the opponent’s and the applicant’s services consist of activities revolving around the actual sale of goods. Furthermore, the services under comparison have the same purpose of allowing to conveniently satisfy different shopping needs, and the same method of use.

The contested advertising, online advertising on a computer network; arranging exhibitions and trade fairs for commercial purposes; business management; business administration; office functions; business advice relating to franchising are aimed at supporting or helping other businesses to carry out or improve their business. These services are dissimilar to the opponent’s goods and services of earlier marks. Apart from being different in nature, the goods and services under comparison have different purposes, distribution channels and producers/providers. Furthermore, they are not in competition.  The mere fact that some goods or services may appear in advertisements is insufficient for finding a similarity.

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 and services found to be identical or similar (to varying degrees) are directed at the public at large and partially at business customers (e.g. wholesaling).

The degree of attention is average.

3. The signs

(1) EUTM 3 977 063: CELINE (2) EUTM 12 086 674:
Earlier trade marks	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 earlier marks and the word ‘CELINA’ of the contested sign will be seen as female first names at least by a part of the public in the relevant territory. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public. As the earlier marks and the element ‘CELINA’ of the contested sign are not descriptive of the relevant goods and services, they are distinctive.

The contested sign is a complex trade mark with the colours gold, black and brown claimed. The sign contains the word ‘CELINA’, written in close to standard letters in the middle. Above this word, there are figurative elements, namely a representation of silhouettes of four persons and two hearts, one on the left and one on the right. Below the word ‘CELINA’, there are much smaller words ‘Moda y Creaciones’ which are highly stylised and may be read only upon a closer examination. All these elements are set against a label with an uneven frame on a bigger rectangular background.

With respect to composite marks, like the contested sign, it must be borne in mind that they cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of such a complex mark, unless that component forms the dominant element within the overall impression created by the composite mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T-6/01, ‘Matratzen’, EU:T:2002:261, § 33).

In the present case, the element ‘CELINA’, given its central position and relatively large size, is not only more eye-catching than the other elements of the contested sign; it is also distinctive as it conveys no message with respect to the goods and services in question.

By contrast, assuming that the other verbal elements of the contested sign, namely ‘Moda y Creaciones’ are understood, they are of weak distinctiveness, at least, for a part of the public. The word ‘MODA’ exists in some relevant languages (e.g. in Polish, Spanish or Italian) or has similar equivalents (e.g. ‘mode’ in French, ‘Mode’ in German). It refers to ‘fashion’ and thus suggests that the relevant goods and services concern fashion items. The Spanish word ‘CREACIONES’ (‘creations’ in English), especially when seen in relation to the relevant goods and services, is also likely to be widely understood as a reference to fashion designs since similar equivalents exist in other official languages of the European Union, such as créations’ in French, ‘Kreationen’ in German, ‘creazioni’ in Italian). The word ‘Y’ means ‘and’ in Spanish. However, even if these words are not understood, still they are of limited impact since they are difficult to discern because of their stylisation and small size. Therefore, they are of secondary importance within the overall impression of the sign.

The contested sign also contains figurative elements described above. However, when a sign consists 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). In the present case, the figurative elements of the contested sign are not particularly sophisticated and will have less impact than the element ‘CELINA’.

Visually, the earlier marks ‘CELINE’ and ‘Céline’ are similar to the word ‘CELINA’ of the contested sign in that they have the first six letters in common and differ in their last letters (‘E’ versus ‘A’) and, in the case of the earlier mark (2) also in the additional accent above the first letter ‘E’. Furthermore, the signs differ in the additional elements of the contested sign, described above. However, as previously explained, these additional elements are either less distinctive and/or secondary. Therefore, overall the marks are visually similar at least to an average 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 first six letters of the earlier marks and of the word ‘CELINA’ of the contested sign. The pronunciation differs in the sound of their final letters (‘E’ versus ‘A’). In some relevant languages (e.g. in French) the final letter ‘E’ of the earlier marks will not pronounced. Furthermore, the signs differ in the sound of the remaining words of the contested sign, if these words are pronounced. However, this is very unlikely considering that these elements are written in a relatively small script in a less prominent position and if deciphered, for at least a part of the public, they refer to the goods in question. Hence, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. At least part of the relevant public will regard the earlier signs ‘CELINE’ and Céline’ and the word ‘CELINA’ of the contested sign as highly similar female names derived from the same root. This conceptual similarity is not counteracted by the presence of the differentiating elements of the contested sign, namely the words ‘Moda y Creaciones’ and the figurative elements representing the silhouettes of persons and hearts, as these elements have less of an impact on the consumers for the reasons explained above. Therefore, the signs are conceptually highly 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 marks

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 claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 and services 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

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).

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).

In the light of the considerations set out above, while the signs at issue are visually similar at least to an average degree, aurally highly similar and conceptually highly similar at least for a part of the public, there is a likelihood of confusion, even in relation to the goods similar only to a low degree.

In its observations, the applicant argues that following a settlement agreement the opponent withdrew opposition in relation to international registration designating the European Union No 1 083 166 ‘CELINA’ which is even more similar to the earlier mark than the contested sign being subject of the present opposition.

The Opposition Division notes that the existence of a settlement between the opponent and a third party, concerning other proceedings, is irrelevant for the present case. The fact that the applicant did not present an agreement with the opponent who maintains the opposition in the present case shows that the opponent does not agree with the absence of likelihood of confusion.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that associates the earlier marks and the word ‘CELINA’ of the contested sign with highly similar female names derived from the same root. Given that a likelihood of confusion for only part of the relevant public of the pertinent territory is sufficient to reject the contested trade mark, there is no need to analyse the remaining part of the public.

Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations.

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

The opposition is also successful insofar as the goods that are similar to a low degree are concerned as the lesser degree of similarity between the goods is offset by the greater degree of similarity between the signs.

The rest of the contested goods and services are dissimilar to the opponent’s goods and services. 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.

REPUTATION – ARTICLE 8(5) EUTMR

The opposition under Article 8(5) EUTMR is based on European Union trade mark registration No 3 977 063.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 31/03/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 05/10/2015.

Within the time limit set by the Office the opponent did not submit evidence concerning the reputation of the trade mark at issue.

On 09/03/2016, the opponent filed the evidence as proof of use of its earlier EU trade mark No 3 977 063. In this respect, it should be noted that the evidence filed as proof of use, under Article 42(2) and (3) EUTMR of earlier trade mark, cannot be taken into account as evidence of reputation because it was received after the date of 05/10/2015 set by the Office for the opponent to submit evidence of the existence, validity and scope of protection of its mark.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account, the opponent failed to establish that the trade mark on which the opposition is based has a reputation.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Pedro JURADO MONTEJANO

Justyna GBYL

Adriana VAN ROODEN

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.