OPPOSITION No B 2 744 418

Para Mi B.V., Melbournestraat 4, 1175 RM Lijnden, Netherlands (opponent), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative)

a g a i n s t

Yma-Maria Marconi, Via Farini N. 18, 43121 Parma, Italy (applicant), represented by Ing. Dallaglio S.R.L., Via Mazzini 2, 43121 Parma, Italy (professional representative).

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

DECISION:

1.        Opposition No B 2 744 418 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 389 208 . The opposition is based on:

 

• European Union trade mark registration No 11 327 061 ‘PARA MI’ and
• Benelux trade mark registration No 1 218 294 .

The opponent invoked Article 8(1)(b) EUTMR.

As a preliminary remark, it should be noted that the opponent in its observations of 27/02/2017 requested the Benelux trade mark registration No 1 218 294 be disregarded as a basis of the opposition and the opposition is no longer directed against Class 38. Therefore, the opposition is regarded to be directed against all the remaining goods and services in Classes 18, 25, 26 and 35; and the examination will continue only on the basis of the European Union trade mark registration No 11 327 061.

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:

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; Leather belts; Bags, rucksacks and diaper bags.

Class 25:        Clothing, headgear; belts; the aforementioned goods excluding footwear.

Class 35:        Advertising; Publication of publicity texts; Direct mail services; Promotional activities; Publicity; Business management; Business administration; Office functions; Marketing; Market canvassing, market research and market analysis; Business mediation in the purchase, sale, import and export, and wholesaling and retailing of leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, belts of leather, bags, rucksacks and diaper bags, clothing, headgear, belts (clothing) and other goods, including jewellery and other fashion accessories; Bringing together, for others, of leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, belts of leather, bags, rucksacks and diaper bags, clothing, headgear, belts (clothing) and other goods, including jewellery and other fashion accessories (excluding the transport thereof), enabling customers to conveniently view, compare and purchase those goods; Arranging events for publicity and/or commercial purposes; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet; the aforementioned services not related to footwear.

The contested goods and services are the following:

Class 18:         Saddlery, whips and animal apparel; Walking sticks; Trunks and travelling bags; Suitcases; Toiletry bags; Travelling sets [leatherware]; Cases of imitation leather; Key cases made of leather; Cosmetic purses; Vanity cases, not fitted; Carry-on bags; Travel luggage; Casual bags; Shoe bags for travel; Small bags for men; Book bags; Cosmetic bags sold empty; Handbags; Shoulder bags; Casual bags; Work bags; Evening handbags; Sport bags; Travel baggage; All-purpose carrying bags; Purses; Handbags; Handbags, purses and wallets; Hat boxes for travel; Satchels; Briefbags; Satchels; Portfolio cases [briefcases]; Coin holders; Hides; Imitation leather; Travel garment covers; Travel cases; Folio cases; Carrying cases for documents; Credit-card holders; Business card cases; Commutation-ticket holders; Imitation leather; Moleskin [imitation of leather]; Bumbags; Umbrellas and parasols; Business card cases; Card wallets [leatherware]; Credit-card holders; Credit card cases [wallets]; Hides; Faux fur; Banknote holders; Card wallets [leatherware]; Key-cases of leather and skins; Briefcases and attache cases; Briefcases [leather goods]; Wallets; Haversacks; Cosmetic purses; Pouches; Travelling sets; Valises; Attache cases; Attache cases; Shoulder belts; Daypacks; Backpacks; Travel garment covers; Luggage, bags, wallets and other carriers.

Class 25:        Clothing; Ladies' clothing; Menswear; Girls' clothing; Christening robes; Children's wear; Boys' clothing; Leisurewear; Sportswear; Robes; Footwear; Walking shoes; Footwear for women; Children's footwear; Training shoes; Stockings; Socks; Headgear; Hats; Tights; Waist belts; Suits; Swimming costumes; Sundresses; Neckties; Gloves [clothing]; Men's underwear; Lingerie; Children's wear; Hosiery; Camiknickers; Mules; Footwear.

Class 26:        Accessories for apparel, sewing articles and decorative textile articles; Needles; Clasps for clothing; Artificial fruit, flowers and vegetables; Lace; Ribbons; Embroidery laces; Brooches [clothing accessories]; Embroidery for garments.

Class 35:        Advertising analysis; Business assistance relating to the formation of commercial undertakings; Marketing assistance; Compilation of advertisements for use as web pages on the Internet; Business consultancy to firms; Business consultancy to individuals; Business advice relating to strategic marketing; Advertising services provided via the internet; Advertising, marketing and promotional services; Retail store services in the field of clothing; Online retail store services relating to cosmetic and beauty products; Online retail store services relating to clothing; Auctioneering services; Commercial trading and consumer information services.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 in question are directed at both the public at large (e.g. in the case of goods in Classes 18, 25 and 26) and professionals such as business owners (e.g. in the case of services in Class 35). The degree of attention may vary from average to high, depending on the specialised nature of the goods/services, the frequency of purchase and their price.

A higher degree of attention is paid for example to advertising, as this could have consequences for the functioning of a business and their price could also be relatively high.

3. The signs

PARA MI
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 earlier mark is a word with two verbal elements ‘PARA’ and ‘MI’. These elements will be understood as ‘for me’ by the Spanish speaking part of the public. For the remaining part of the public they have no meaning. In any case, as they are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.

The contested sign is a figurative mark. It consist of a clearly distinguishable string of five letters ‘ARMII’ written in a stylised upper case typeface and figurative elements which include two small dots at the beginning and the end of the sign as well as a fanciful symbol that could be perceived as a vertically mirrored, highly stylised letter ‘P’. The word element ‘ARMII’ or ‘PARMII’ has no meaning for the relevant public and is distinctive.

Neither of the marks under comparison has any element that could be considered more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘*AR*MI*’ or ‘PAR*MI*’. However, they differ in the additional letter ‘A’ of the earlier sign and the additional letter ‘I’ of the contested sign. Furthermore, they differ in the figurative elements in the contested sign which have no counterparts in the earlier mark; in particular in the stylisation of the fanciful symbol or the vertically mirrored letter ‘P’ at the beginning of the contested sign. 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. Taking all the above into account, the signs are visually similar only to a low 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 ‘*AR*MI*’ or ‘PAR*MI*’. The pronunciation differs in the sound of the additional letters ‛A’ and ‘I’, which have no counterparts in the earlier sign and contested mark respectively. Even if assuming that the fanciful symbol at the beginning of the contested mark will be perceived as the vertically mirrored letter ‘P’, the vowel structure in both signs will undoubtedly influence the intonation patterns. For example, the double ‘II’ may shift the accent to the end of the word ‘PARMII’ or alternatively the absence of the second ‘A’ will render the pronunciation of the contested mark much shorter compared to the three full syllables of the earlier mark. Therefore, the signs are considered aurally similar to a lower than average degree.

Conceptually, reference is made to the previous assertions regarding the meaning of ‘PARA MI’ for Spanish speakers. Consequently, since only one sign has a meaning for this part of the public, the signs are not conceptually similar.

For the part of the public that will not perceive any meaning in the signs, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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

When determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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, ‛Sabel’, EU:C:1997:528 § 23)

In the present case, the goods and services are assumed to be identical and the degree of attention paid by the relevant public varies form average to high. Visually and aurally, the signs are similar only to a low degree. The conceptual level is either irrelevant for a part of the public or for this part of the public that will perceive the meaning of the earlier mark, the signs are conceptually not similar. Furthermore, for a significant part of the relevant goods and services (e.g. Class 25), the visual aspect will naturally play a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the figurative elements and the visually different beginnings are particularly relevant when assessing the likelihood of confusion between them. Taking into account also the aural differences, the Opposition Division considers that despite the assumed identity of the goods and services in question, the differences between the marks are sufficient to avoid any likelihood of confusion, even when the degree of attention of the relevant public is average.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Loreto URRACA LUQUE

Arkadiusz GORNY

Judit NÉMETH

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.