OPPOSITION No B 2 722 984

Jofama AB, Västra Industrigatan 16, 782 33 Malung, Sweden (opponent), represented by Danowsky & Partners Advokatbyrå KB, Regeringsgatan 20, 111 53 Stockholm, Sweden (professional representative)

a g a i n s t

Jovana AG, Seestraße 69, 8806 Bäch, Switzerland (applicant), represented by Zanker & Vorbuchner, Rechtsanwälte, Schertlinstr. 29, 86159 Augsburg, Germany (professional representative).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 722 984 is partially upheld, namely for the following contested goods and services:

Class 18:        Leather and imitations of leather, and goods made of these materials, namely handbags and purses.

Class 25:         Clothing, footwear, headgear, belts.

Class 35:         Retailing, including via the internet, in relation to leather and imitations of leather, and goods made of these materials, namely handbags and purses, clothing, footwear, headgear and belts.

2.        European Union trade mark application No 15 076 623 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 076 623 ‘Jovana’, namely against all the goods and services in Classes 18, 25 and 35. The opposition is based on European Union trade mark registration No 13 345 186 ‘JOFAMA’. 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 and services

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

Class 9:        Protective and safety equipment (except sporting goods), including clothing, gloves, head protection and footwear for use in protection against accidents or injury, protective helmets for motorcyclists.

Class 18:         Leather and imitation leather; hides; animal skin; casual bags; rucksacks.

Class 25:         Clothing; headgear; footwear; motorcycle clothing; jackets [clothing]; leather jackets; pants (am.); trousers of leather; suits of leather; overalls; long underwear; rainsuits; sweaters; headwear; hoods [clothing]; balaclavas; neckerchiefs; collars; gloves; motorcycle gloves; boots; boots for motorcycling; socks; belts made out of cloth; leather belts [clothing]; belts with zip fasteners; garters.

Class 28:         Protective devices for playing sports, including back protectors; chest protectors; knee pads; elbow guards; shoulder protectors; leg protectors; protective padding for sports.

The contested goods and services are the following:

Class 18:         Leather and imitations of leather, and goods made of these materials, namely handbags and purses.

Class 25:         Clothing, footwear, headgear, belts.

Class 35:         Advertising, business management; promotion services; telemarketing services; marketing services; publication of publicity materials; retailing, including via the internet, in relation to jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, and goods made of these materials, namely handbags and purses, clothing, footwear, headgear and belts.

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 ‘including’, used in both lists of goods and services, indicates that the specific goods and services 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

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 leather and imitations of leather are identically contained in both lists of goods (despite slightly different wording).

The contested goods made of these materials (i.e. leather and imitations of leather), namely handbags and purses overlap with the opponent’s casual bags, as the latter also cover casual handbags and purses. Therefore, they are identical.

Regarding the applicant’s argument related to the dissimilarity between the conflicting goods in Class 18 resulting, in its opinion, from the way in which the contested goods are actually sold (exclusivity, high price boutiques, etc.), it has to be stated that this is irrelevant to the present proceedings. In fact, the examination of the likelihood of confusion carried out by the Office is a prospective examination. In contrast to trade mark infringement situations – where the courts deal with specific circumstances in which the particular facts and the specific nature of use of the trade mark are crucial – the deliberations of the Office on likelihood of confusion are carried out in a more abstract manner.

It must be recalled that the Office must take into account the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. However, the particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58).

Contested goods in Class 25

The contested clothing, footwear and headgear are identically contained in both lists of goods.

The contested belts include, as a broader category, the opponent’s leather belts [clothing]. 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 services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing, including via the internet, in relation to leather and imitations of leather, and goods made of these materials, namely handbags and purses, clothing, footwear, headgear and belts is similar to a low degree to the opponent’s leather and imitation leather; casual bags in Class 18 and clothing; footwear; headgear; leather belts [clothing] in Class 25, since these goods of the opponent and the goods in relation to which the contested retail services are offered are identical, according to the comparison carried out above.

However, the contested retailing, including via the internet, in relation to jewellery, precious stones, horological and chronometric instruments and the opponent’s goods in Classes 9, 18, 25 and 28 are not similar. This is because 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 dissimilar.

The contested advertising; promotion services; telemarketing services; marketing services; publication of publicity materials consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

All of the abovementioned contested services are fundamentally different in nature and purpose from the manufacturing of goods. The fact that some of the opponent’s goods appear in advertisements or marketing activities is insufficient for finding a similarity. Therefore, the contested advertising; promotion services; telemarketing services; marketing services; publication of publicity materials are dissimilar to all of the opponent’s goods in Classes 9, 18, 25 and 28.

The same applies to the contested business management services, which are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. Therefore, these services are dissimilar to all of the opponent’s goods in Classes 9, 18, 25 and 28, as they do not have the same nature, purpose, end users or distribution channels. Moreover, they are neither complementary nor in competition.

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 a low degree are directed at the public at large, except for leather and imitations of leather in Class 18 and the retail services of these goods in Class 35, which principally target professionals.

The degree of attention is higher than average for the professional public with respect to leather and imitations of leather and the retail thereof, since these goods and services are likely to be subject to a more careful purchasing decision, due to the fact that they concern raw materials used in the manufacturing of other goods. By contrast, for the remaining, general, public and the remaining goods and services (e.g. bags, clothing and retail related thereto), the degree of attention is considered average.

3. The signs

JOFAMA	Jovana
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).

Both ‘JOFAMA’ and ‘Jovana’ will be perceived by part of the relevant public as invented words and are, therefore, distinctive, for the relevant goods and services.

As pointed out by the opponent, in some parts of the relevant territory, ‘Jovana’ may be perceived as a female name. In this case, this word remains distinctive for the relevant goods and services.

Contrary to the opponent’s argument, the Opposition Division sees no valid reason to believe that the relevant public will artificially dissect the word ‘JOFAMA’ and, what is more, associate the element ‘FAMA’ with the prefix ‘PHARMA’. Moreover, as no evidence has been submitted to prove this assertion, this argument must be set aside.

Visually, both signs are composed of six letters and they coincide in their first two, their fourth and their final letters, ‘JO*A*A’. The only difference between the signs lies in their third and fifth letters, namely ‘**F*M*’ in the earlier mark versus ‘**V*N*’ in the contested sign. As consumers tend to focus on the initial parts of signs, they will perceive the identity between the signs’ first two letters and will pay much less attention to the different, third and fifth, letters.

Regarding the applicant’s argument in relation to the visual dissimilarity between the signs because of the differing typeface used in the marks, it must be recalled that, in the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are depicted in upper or lower case characters.

Therefore, the signs are considered visually similar to at least 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 letters ‘/JO*A*A/’, present identically in both signs in the same order. Admittedly, the pronunciation of the signs will be slightly different as a result of the signs’ third letters, being ‘F’ in the earlier mark and ‘V’ in the contested sign. However, this difference will have little impact on the intonations and rhythms of the signs, in particular since both signs consist of three syllables and six letters. Moreover, as the sound of the letter ‘M’ in the earlier mark and the sound of the letter ‘N’ in the contested sign are very similar, which can also be the case for the letter ‘F’ of the earlier mark and the letter ‘V’ of the contested sign (e.g. in Dutch), the signs are considered aurally similar to at least an average degree.

Conceptually, as explained above, for a part of the public in the relevant territory, neither of the signs has a meaning. In this case, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For another part of the public in the relevant territory, as also pointed out by the opponent, the contested sign, ‘Jovana’, may be perceived as a female given name. However, as the other sign has no meaning in that territory, the signs are not conceptually similar.

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

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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

For the purpose of the global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The contested goods and services are partly identical, partly similar to a low degree and partly dissimilar to the opponent’s goods; those found to be identical and similar to a low degree target the public at large and professionals, with the degree of attention varying from average to high. Furthermore, the earlier mark is considered to have an average degree of distinctiveness in relation to the relevant goods.

The marks are visually and aurally similar to at least an average degree and either the conceptual comparison is not possible, for a part of the relevant public, or the signs are conceptually not similar, for the part of the relevant public that may perceive the contested sign as a female given name.

The differences between the signs are only confined to their third and fifth letters/sounds. However, these differences are, in the Opposition Division’s opinion, not sufficient to counteract the similarities between the signs, which result in the signs creating similar visual and aural impressions, even considering that the contested sign might evoke a female given name for part of the relevant public and that the degree of attention will be higher than average with respect to some of the relevant goods and services.

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 European Union trade mark registration No 13 345 186.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark and even for the contested services that are similar to only a low degree to the opponent’s goods. This is because, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those goods and services is clearly offset by the at least average degrees of visual and aural similarity between the signs.

The rest of the contested services 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 services 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 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

Alexandra APOSTOLAKIS

Martin MITURA

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.