OPPOSITION No B 2 705 344

CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent)

a g a i n s t

Maria Ripoll, C/ Alfonso Torrent nº 4, 17403 Sant Hilari Sacalm (Girona), Spain (applicant), represented by Gamapaten, Calle Alameda, 5, 28130 Alalpardo (Madrid), Spain (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 705 344 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 of European Union trade mark application No 15 106 784. The opposition is based on Benelux trade mark registration No 983 774. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 01/02/2017, the applicant submitted its observations in reply to the opponent’s observations; however, these were not in the language of the proceedings. Therefore, the applicant’s arguments will not be taken into account in this decision.

Furthermore, this decision is taken regardless of the fact that the opponent’s observations in reply, dated 22/02/2017, were not forwarded to the applicant, as the fact that the applicant had no opportunity to respond to the opponent’s arguments does not prejudice the interests of the opponent.

None of the above prejudices the interests of the applicant, since the opposition is rejected in its entirety for the reasons explained in detail below.

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, inter alia, the following:

Class 25:         Clothing.

The contested goods are the following:

Class 25:        Ready-made clothing.

The contested ready-made clothing is included in the broad category of the opponent’s clothing. Therefore, they are identical.

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 are directed at the public at large, whose degree of attention is average.

3. The signs

Theresa
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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)

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to weak elements.

The earlier mark is a word mark, consisting of the verbal element ‘Theresa’ in lower case letters, except for the initial letter ‘T’.

The contested mark is a figurative mark, consisting of the letters ‘TR’ in slightly stylised black bold upper case letters. Underneath these letters are the verbal elements ‘TERESA RIPOLL’ in standard black bold upper case letters.

The verbal elements ‘Theresa’ of the earlier mark and ‘TERESA’ of the contested mark are different spellings of the same female name. As the opponent correctly points out, the name Theresa (and its variations) is a common first name. Therefore, it will be perceived as such by the relevant public. Consequently, and bearing in mind that especially in relation to clothing, it is rather common for designers to protect their two names as trade marks, it is highly likely that the combination of verbal elements ‘TERESA RIPOLL’ in the contested mark will be perceived as a first name and a surname, and ‘TR’ as the initials of this name.

Contrary to the opponent’s argument that, in Western culture, greater importance is given to a forename, it is settled case-law that at least in a part of the European Union, the consumer will normally attribute greater distinctiveness to a surname than to a forename, unless the surname is very common, unlike in the present case (24/06/2010, C-51/09 P, Becker/Harman International Industries, EU:2010:368, § 36). The opponent did not submit any evidence in support of its argument. Therefore, the opponent’s argument is set aside.

On the basis of the above, because the surname ‘RIPOLL’ is very unusual in comparison with the common given name ‘T(H)ERESA’, it is considered more distinctive than the element ‘TERESA’ in the contested sign.

The element ‘TR’ in the contested sign is the dominant element as it is the most eye-catching by virtue of its size and central position above the other components. Its distinctiveness in relation to the relevant goods is average.

Visually, the earlier sign ‘Theresa’ coincides in six out of its seven letters with the verbal element ‘TERESA’ of the contested sign. However, the second letter ‘h’ of the earlier mark has no counterpart in the contested sign. Furthermore, the signs differ in the distinctive components ‘TR’ and ‘RIPOLL’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the elements ‘Theresa’ and ‘TERESA’ is either identical or almost identical. The additional letter ‘h’ in the earlier sign does not make any significant difference in the pronunciation, even in the territories where the letter ‘h’ will be pronounced by the relevant public, such as the Dutch-speaking part. However, the pronunciation differs in the distinctive components ‘TR’ and ‘RIPOLL’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the words ‘Theresa’ and ‘TERESA’ are different forms of the same name, the signs coincide conceptually insofar as they refer to the same forename, which is the least distinctive element in the contested sign. However, the element ‘RIPOLL’ in the contested sign allows a more specific identification of a person than the first name alone in the earlier mark, which, because it is common, could refer to a vast number of persons. Moreover, the average consumer tends to perceive a sign in its entirety (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). The component ‘TR’ makes it more likely that the consumer will perceive the contested sign as a whole, rather than the words ‘Teresa’ and ‘Ripoll’ in isolation. Therefore, the relevant consumer is unlikely to make a link between the contested sign and the earlier mark, which comprises only a forename.

Therefore, the signs are conceptually similar to a low degree.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The signs are visually, aurally and conceptually similar to a low degree. Contrary to the arguments of the opponent, the fact that the signs refer to the same female forename, and that this forename is located at the beginning of the contested sign, is not sufficient to establish a likelihood of confusion. It may be true that the relevant consumer reading from left to right tends to place more importance on the beginning of a sign. However, this is not a general rule and cannot be applied automatically to any case without taking into account all the other factors that have an impact on the likelihood of confusion. This is because, as stated above, not only is the partly coinciding word the less distinctive element in the contested sign, but the additional elements ‘TR’ and ‘RIPOLL’, recognised as initials and a surname, have an intrinsic distinctive character and sufficiently differentiate the contested mark from the earlier mark. Consequently, the relevant public will focus its attention not on the beginning of the contested sign, but rather on the distinctive surname and the initials, which are the dominant element in the contested sign.

Moreover, generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays 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 additional verbal elements in the contested sign are particularly relevant when assessing the likelihood of confusion between the signs.

Considering all the above, even when the goods are identical, there is no likelihood of confusion on the part of the Benelux 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

Lena FRANKENBERG GLANTZ

Birgit Holst FILTENBORG

Plamen IVANOV

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.