OPPOSITION No B 2 793 035

Continental Shelf 128 Limited, 18-24 Bury New Road, Manchester  M8 8FR, United Kingdom (opponent), represented by Mathys & Squire LLP, Abbey House 32 Booth Street, Manchester Lancashire M2 4AB, United Kingdom (professional representative)

a g a i n s t

Adina-Emaluela Neboisa, B-dul Decebal nr. 31, Bl C1, Sc B, Et. 4, Ap. 31, 610004 Piatra Neamt, Romania, Constantin-Sebastian Neboisa, B-dul Decebal nr. 31, Bl C1, Sc B, Et. 4, Ap. 31, 610004 Piatra Neamt, Romania (applicants).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 793 035 is partially upheld, namely for the following contested goods:

Class 25:        Clothing.

2.        European Union trade mark application No 15 328 206 is rejected for all the above goods. 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 15 328 206 . Initially, the opposition was filed against all the goods and services in Classes 25, 26 and 35. During the course of proceedings, the scope of the opposition was restricted to cover all the goods in Classes 25 and 26 and only some of the services in
Class 35.

The opposition is based on European Union trade mark registration No 4 303 848 ‘EMANUEL‘ (word mark), in relation to which Article 8(1)(b) and 8(5) EUTMR were invoked. The opposition was also based initially on the earlier UK non-registered trade mark ‘EMANUEL’, in relation to which Article 8(4) EUTMR was invoked. However, this ground of opposition was withdrawn during the course of proceedings.

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 25:        Clothing, footwear, headgear.

The contested goods and services are the following:

Class 25:        Clothing.

Class 26:        Accessories for apparel, sewing articles and decorative textile articles.

Class 35:        Commercial trading and consumer information 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 25

Clothing is identically contained in both lists of goods.

Contested goods in Class 26

The contested goods in this class are accessories for apparel (for example lace, ribbons or hooks), sewing articles (such as sewing needles or pin cushions) and decorative textile articles (for example textile ribbons for gift wrapping or rosettes of textile materials). These are either goods used for dressmaking or goods used for decorating objects or interiors/exteriors. On the other hand, the opponent’s goods, namely clothing, footwear, headgear, are consumer products worn by people for protection against the elements and as fashion articles. The nature, purpose and method of use of the goods compared are clearly different. The goods also differ in their relevant consumers and usual commercial origin. They are neither complementary nor in competition. The fact that both the applicants‘ and the opponent’s goods can be made of textile as a raw material does not make them similar, because the degree of transformation of the textile in the goods of both parties is quite high. Furthermore, the fact that accessories for apparel are parts used for producing the opponent’s clothing does not make them similar from the consumers point of view. This is because the relevant public is rather different (dress-makers vs general public) and there are further differences as regards the nature, purpose, method of use and usual commercial origin of the goods.

On the whole, the goods are considered to be dissimilar.

The opponent refers to previous decisions of the Office to support its argument that the contested goods in Class 26 are similar to the opponent’s goods in Class 25. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Furthermore, two out of the four cases referred to by the opponent are not relevant to the present proceedings because the finding of similarity in those cases was not based on clothing, footwear, headgear in Class 25 but on other very specific goods from the alphabetical list of Class 25, such as cuffs or collar protectors, which do not fall within the natural and usual meaning of the opponent’s clothing, footwear, headgear in the present case.

Contested services in Class 35

The contested services in this class are commercial trading and consumer information services. These services are quite vague (especially commercial trading) and, in the absence of any further specification, do not show any particular link to the opponent’s clothing, footwear, headgear in Class 25.

Where the Office is unable to clearly determine the exact scope of protection of vague terms, the vagueness of the wording is not a sufficient basis in itself for arguing in support of identity or similarity. Vague term(s) may only be taken into account in their most natural and literal meaning and may not be construed as relating to goods, qualities, properties, methods of use, etc. to which that term is not expressly limited.

The contested commercial trading consists mainly of business support services such as processing orders, advisory services relating to the purchase of goods and services, arranging commercial contracts, etc. These services cannot be construed as including retail (of clothing, footwear and headgear) as argued by the opponent. The contested consumer information services consist in providing information and advice to consumers with the aim to help them in the purchase or use of a variety of goods and services. These contested services cannot be construed as being specifically linked to clothing, footwear and headgear. Consequently, when comparing all the contested services in Class 35 with the opponent’s goods in Class 25, it results that they differ in their nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods/services, their distribution channels and sales outlets are normally different.

For all the above reasons, the Opposition Division finds the goods and services to be dissimilar and cannot agree with the opponent’s arguments claiming similarity of these goods and services.

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

EMANUEL
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.

The elements ‘Home’ and ‘Your Body Comfort’ are meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the public in the United Kingdom, Ireland and Malta.

The Opposition Division agrees with the opponent that ‘EMANUEL’ in the earlier mark and ‘Emanuelle’ in the contested sign will be perceived by the relevant public as forenames, the former being a male name and the latter its female equivalent. As these forenames have no relation to the relevant goods (clothing), these elements are distinctive.

The Opposition Division also concurs with the opponent that the elements ‘Home’ and ‘Your Body Comfort’ of the contested sign are descriptive and non-distinctive for the relevant goods, namely clothing. ‘Home’ will be perceived as an indication that the goods are for use at home and ‘Your Body Comfort’ will be perceived only as a laudatory slogan praising the quality of the goods, namely that the consumer will feel comfortable in them.

The figurative element in the upper part of the contested sign consisting of a picture of a rose is distinctive because it has no relation to the relevant goods.

The small inscription ‘www.emanuelle-home.com’ at the bottom of the contested sign will be perceived as a web address containing the distinctive word ‘emanuelle’ and the non-distinctive word ‘home’.

The yellow rectangular background of the contested sign plays merely a decorative role and has very little distinctiveness, if any.

The stylised word element ‘Emanuelle’ and the picture of a rose in the contested sign are the dominant elements as they are the most eye-catching.

When signs consist 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). Therefore, out of the two dominant and distinctive elements of the contested sign, namely the stylised word ‘Emanuelle‘ and the picture of the rose, the element ‘Emanuelle‘ has a stronger impact.

Visually, the signs coincide in the sequence of letters ‘EMANUEL**’, which forms the entirety of the earlier trade mark and, in the case of the contested sign, it appears in one of the two most distinctive and dominant elements of the sign (‘Emanuelle’). However, the marks differ in all the additional elements of the contested sign that have no counterpart in the earlier trade mark, namely the additional letters ‘LE’, the stylisation and colours, the picture of a rose and the verbal elements ‘Home’, ‘Your Body Comfort’ and ‘www.emanuelle-home.com’.

Therefore, the signs are visually similar to an average degree.

Aurally, the contested sign will most probably be referred to only as ‘Emanuelle’ since the remaining word elements are either non-distinctive (and therefore not capable of identifying the commercial origin of the goods or services) or very small, and consumers frequently omit this kind of term when referring to the marks aurally.

English-speaking consumers will pronounce the words ‘EMANUEL’ and ‘Emanuelle’  identically. Consequently, the marks are aurally identical.

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 name in a male/female version, they are conceptually similar to 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 claimed that the earlier trade mark enjoys reputation (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 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 goods are partially identical and partially dissimilar, and the services are dissimilar. The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the relevant public will be average too.

The marks are visually and conceptually similar to an average degree and aurally identical. Consequently, the overall impressions created by the marks are similar.

The goods found to be identical are mass consumption products, and the average consumer of the category of goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on this, consumers might believe that the conflicting goods found to be identical come from the same or economically-linked undertakings.

Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity of part of the goods involved, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods come from the same or economically-liked undertakings.

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/services covered are from the same or economically linked undertakings. Indeed, 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

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.

The rest of the contested goods and services are dissimilar. As identity/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 and services cannot be successful.

REPUTATION – ARTICLE 8(5) EUTMR

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 28/10/2016 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 09/03/2017.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

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

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

María del Carmen SUCH SÁNCHEZ

Vít MAHELKA

Lucinda CARNEY

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.