OPPOSITION No B 2 717 505

Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (opponent), represented by Adler Modemärkte AG, Christina Hambeck-Joh, Industriestr. Ost  1-7 63808 Haibach, Germany (employee representative)

a g a i n s t

OVS S.p.A., Via Terraglio 17, 30174 Venezia Mestre (VE), Italy (applicant), represented by Ufficio Brevetti Rapisardi S.r.l., Via Serbelloni 12, 20122 Milan, Italy (professional representative).

On 13/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 717 505 is upheld for all the contested goods, namely 

Class 25:        Clothing; footwear; headgear.

2.        European Union trade mark application No 15 231 483 is rejected for all the contested goods. It may proceed for the remaining goods and services.  

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 231 483, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 12 339 636. 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

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

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 25:        Clothing; footwear; headgear.

Clothing; footwear; headgear are identically contained in both lists of goods.

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. The degree of attention will be average.

3. The signs

THEA	ROSA THEA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the
comparison of the signs on the Italian- speaking part of the relevant public. The element ‘THEA’ in the earlier mark and the contested sign will be understood by a part of the relevant Italian- speaking public as a given, uncommon, female name. This coinciding element is considered normally distinctive for the relevant public in relation to the goods at issue.

The applicant claims that the name ‘THEA’ is not an uncommon name and that it is a popular name in Scandinavia and in the United Kingdom; nevertheless, and in addition to the fact that no evidence to this end is provided for, in any event, as mentioned above, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a word mark made up of the single word, ‘THEA’.

The contested sign is a word mark, made up of the terms ‘ROSA’ and ‘THEA’. The term ‘ROSA’ will be perceived by part of the public in the relevant territory as a rather common first female name. For another part of the public, the term ‘ROSA’ will be perceived as the term for the colour pink, or as the term for a flower (in particular a rose). Accordingly, part of the relevant public will pay more attention to the element ‘THEA’, than to the additional name ‘ROSA’ (present only in the contested sign), in particular, in the case the latter is perceived as a colour (and thus will be devoid of distinctiveness) or in the case it is perceived as a common female name (and thus will have less impact than the uncommon name ‘THEA’.

In this regard, the applicant claims that the expression ‘ROSA THEA’ of which the contested sign is composed would be associated with a quite rare wild species cultivated in China. The Opposition Division does not share this view, as the relevant average consumer of the relevant goods will not be aware of this.

While it is acknowledged that, and as the applicant correctly has stated, generally, the beginning of a sign has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the present case, it is true that ‘ROSA’ is the first element of the contested sign, nevertheless, that does not mean that ‘THEA’ will be disregarded. Indeed, given that the earlier mark is entirely reproduced in the contested sign and plays an independent and distinctive role therein, and moreover is the more distinctive element of the contested sign, the differentiating element is not sufficient to significantly influence the overall impression of the contested sign and to counterbalance the similarity resulting from the shared component ‘THEA’.

This means that both visually and aurally, the signs are similar to at least an average degree, since the relevant consumers will rather notice the coincidence in the signs’ common and distinctive element ‘THEA’ than the differentiating name ‘ROSA’ of the contested sign which will – as detailed above – have less impact on part of the relevant consumers.

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

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

4. Distinctiveness of the earlier mark

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

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

As follows from the analysis in section a) above, the goods have been found identical.

There is an average degree of visual, aural and conceptual similarity of the marks
stemming from the shared component ‘THEA’, which constitutes the entirety of the
earlier mark and is reproduced as an independent and distinctive element in the
contested sign.

Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods covered are from the same or
economically linked undertakings.

Indeed, in the present case it is highly conceivable that the relevant consumer will
perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Consequently, the relevant public will consider that the relevant identical goods come from the same undertaking or at least economically linked undertakings.

Taking into account all the relevant circumstances of the case and in particular the
identity of the goods and the overall average degree of similarity between the signs, the Opposition Division considers that there is a likelihood of confusion on the part of the Italian- speaking public. 

As stated above in section c) of this decision, a likelihood of confusion for only part of
the relevant public of the European Union is sufficient to reject the contested
application.

Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 12 339 636. It follows that the contested trade mark
must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

María Clara IBÁNEZ FIORILLO

Edith Elisabeth VAN DEN EEDE

Andrea VALISA

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.