OPPOSITION DIVISION
OPPOSITION No B 2 829 821
dm-drogerie markt GmbH + Co. KG, Carl-Metz-Str. 1, 76185 Karlsruhe, Germany
(opponent), represented by Lemcke, Brommer & Partner Patentanwälte
Partnerschaft mbB, Siegfried-Kühn-Straße 4, 76135 Karlsruhe, Germany
(professional representative)
a g a i n s t
Lorine Mangin d’Ouince, 91 Avenue Jean-Baptiste Clément, 92100 Boulogne-
Billancourt, France (holder), represented by Atlan et Boksenbaum Avocats, 61,
avenue Victor Hugo, 75116 Paris, France (professional representative).
On 22/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 829 821 is partially upheld, namely for the following
contested goods:
Class 18: wallets; purses (coin purses); credit card cases [wallets]; bags; vanity
cases.
Class 25: Clothing; footwear; headgear; shirts; clothing of leather; belts
(clothing); furs (clothing); gloves (clothing); scarves; neckties; hosiery; socks;
bedroom slippers; beach footwear; ski boots; footwear for sports; underwear.
2. International registration No 1 309 116 is refused protection in respect of the
European Union for all of the above goods. It may proceed for the remaining
goods.
3. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of international registration
designating the European Union No 1 309 116. The opposition is based on
international trade mark registrations No 957 598 ‘alana’ and No 1 123 649 ‘ALANA’.
The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 829 821 page: 2 of 9
alana
SUBSTANTIATION OF INTERNATIONAL REGISTRATION DESIGNATING THE
EUROPEAN UNION NO 957 598 ‘alana’
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(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 is restricted in this
examination to the facts, evidence and arguments submitted 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 (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit 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) EUTMIR (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence of the existence, validity and scope of
protection of its earlier mark or earlier right, as well as evidence proving its
entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark that is not a
European Union trade mark, the opposing party must submit a copy of the relevant
registration certificate and, as the case may be, of the latest renewal certificate,
showing that the term of protection of the trade mark extends beyond the time limit
referred to in paragraph 1 and any extension thereof, or equivalent documents
emanating from the administration by which the trade mark was registered (emphasis
added)— Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of
commencement of the adversarial part).
On 13/02/2017 the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. This time limit expired
on 18/06/2017.
In order to substantiate the earlier international registration designating the European
Union No 957 598 ‘alana’, the opponent submitted on 10/01/2017 an extract from the
WIPO-Romarin data base, dated on the same day.
The evidence mentioned above is not sufficient to substantiate the opponent’s earlier
mark because the expiration date shown on the certificate provided is 24/05/2017,
Decision on Opposition No B 2 829 821 page: 3 of 9
that is to say before the expiry of the time limit for the opponent to substantiate its
earlier rights, i.e. 18/06/2017. Furthermore, the opponent did not submit any copy of
renewal certificate regarding this earlier mark. Consequently, the opponent failed to
show the validity of its mark beyond the relevant point in time as mentioned in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part).
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), the opposing party has not proven the existence, validity and scope
of protection of its earlier mark or earlier right, as well as its entitlement to file the
opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this
earlier mark.
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.
The opposition examination of the opposition will continue on the basis of the other
earlier mark which was duly substantiated, namely earlier international trade mark
registration designating the European Union No 1 123 649 ‘ALANA’.
a) The goods
The goods on which the opposition is based are the following:
Class 10: Teethers.
Class 15: Musical boxes.
Class 20: Baby bouncers.
Class 21: Apparatus and containers for household or kitchen use; combs for hair
care; brush-making material; glass, unworked or semi-worked glass (except building
glass); glassware, porcelain, earthenware, not included in other classes; dustbins;
baby baths, portable; heaters, for feeding bottles, non-electric; cups; brooms;
disposable table plates; insulating flasks; cookie jars and biscuit tins; cooking
utensils; cake pans; cups of paper and/or plastic; lunch boxes; shoe horns
Class 25: Clothing, footwear, headgear, baby clothing, layettes (clothing), scarves,
girdles, scull caps (headgear), bibs, not of paper, coats, caps, ear muffs (clothing),
Decision on Opposition No B 2 829 821 page: 4 of 9
waterproof clothing, scarfs, sleepsuits and pyjamas, socks, stockings, underwear,
pants.
Class 28: Games, toys; articles for gymnastics and sports, all included in this class;
play gyms for babies, physical training articles for babies, rattles, gripping rings (toys
for babies), lullaby toys, mobiles, toys for playing with sand, dolls (toys), clothing for
dolls, none of these goods included in other classes, and particularly intended for
babies and infants; scooters (toys for children).
The contested goods are the following:
Class 18: Leather; animal skins; trunks and suitcases; umbrellas and parasols;
walking sticks; whips; saddlery; wallets; purses (coin purses); credit card cases
[wallets]; bags; vanity cases; collars for animals; clothing for animals
Class 25: Clothing; footwear; headgear; shirts; clothing of leather; belts (clothing);
furs (clothing); gloves (clothing); scarves; neckties; hosiery; socks; bedroom slippers;
beach footwear; ski boots; footwear for sports; underwear.
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
Clothing, headgear and footwear in Class 25 are used to cover parts of the human
body and protect them against the elements. They are also articles of fashion.
Goods such as the contested wallets; purses (coin purses); credit card cases
[wallets]; bags; vanity cases in Class 18 are related to articles of clothing, headgear
and footwear in Class 25. This is because consumers are likely to consider the
Class 18 goods as accessories that complement articles of outer clothing, headgear
and even footwear, as the former are closely co-ordinated with the latter.
Furthermore, they may be distributed by the same or linked manufacturers and it is
not unusual for manufacturers of clothing, headgear and footwear to directly produce
and market related goods made of leather and imitations of leather. Moreover, these
goods can be found in the same retail outlets. Therefore, these goods are considered
similar.
Leather; animal skins in Class 18 refer to the skins of various kinds of animals (or
imitations thereof). These are raw materials. The fact that one product is used for
manufacturing another (for example, leather for footwear) is not sufficient in itself for
concluding that the goods are similar, as their nature, purpose, relevant public and
distribution channels may be quite distinct. The abovementioned raw materials in
Class 18 are intended for use in industry rather than for direct purchase by the final
consumer. They are sold in different outlets, are of a different nature and serve a
different purpose from clothing, headgear and footwear and the other opponent’s
goods in Class 25.
Trunks are large packing cases or boxes that clasp shut, used as luggage or for
storage; umbrellas are devices for protection from the weather consisting of a
collapsible, usually circular, canopy mounted on a central rod; parasols are light
umbrellas carried for protection from the sun; walking sticks are canes or other staffs
used as aids for walking; whips are instruments used for driving animals; collars for
Decision on Opposition No B 2 829 821 page: 5 of 9
animals and clothing for animals are devices to tie up pets and protect them from
climate changes; and saddlery is equipment for horses, such as saddles and
harnesses. The nature of these goods is very different from that of the earlier goods
in Class 25. They serve very different purposes (storage, protection from rain/sun,
assistance with walking, aid in the control and/or riding of animals versus
covering/protecting the human body). They do not usually have the same retail
outlets and are not usually made by the same manufacturers.
The same reasoning applies to the contested suitcases. These goods are considered
dissimilar to clothing, headgear and footwear. The contested goods are for carrying
things when travelling and do not satisfy the same needs as the opponent’s goods in
Class 25. They do not have the same retail outlets and are not made by the same
manufacturers. Moreover, the goods are neither in competition nor complementary.
Therefore, the contested leather; animal skins; trunks and suitcases; umbrellas and
parasols; walking sticks; whips; saddlery; collars for animals; clothing for animals are
dissimilar to the opponent’s goods in Class 25.
Likewise, the above mentioned contested goods are dissimilar to the other goods
covered by the earlier mark in Classes 10, 15, 20 and 21. No point of contact can be
found between those goods, as they have a different nature, method and purpose of
use, are manufactured by different companies, sold through different distribution
channels and intended for a different public. Finally, they are not complementary nor
are they in competition.
Contested goods in Class 25
Clothing; footwear; headgear; scarves; socks; underwear are identically contained in
both lists of goods.
The contested shirts; clothing of leather; belts (clothing); furs (clothing); gloves
(clothing); neckties; hosiery are included in the broad category of the opponent’s
clothing. Therefore, they are identical.
Finally, the contested bedroom slippers; beach footwear; ski boots; footwear for
sports are included in the broad category of the opponent’s footwear. Therefore, they
are identical.
b) 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 or similar are directed at the
public at large. The degree of attention is expected to be average.
Decision on Opposition No B 2 829 821 page: 6 of 9
c) The signs
ALANA
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). This applies by analogy to international registrations
designating the European Union. 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 ALANA and AMALA are meaningful in certain territories, for example in
English- and Italian-speaking countries. Consequently, the Opposition Division finds it
appropriate to focus the comparison of the signs on the Hungarian- and Polish-
speaking part of the public.
The earlier mark is a word mark as displayed above. The contested mark is a
figurative mark consisting of the word AMALA in fairly standard uppercase letters,
and, above it, a symbol composed of three black triangles which will be perceived as
an ornamental depiction.
Neither the element ‘ANALA’ or ‘AMALA’ contained in the marks, respectively, has
any meaning for the relevant public and are, therefore, distinctive.
In this respect, it is noted that when signs consist of both verbal and figurative
components, as in the case of the contested mark, 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).
Furthermore, account must be taken of the fact that 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.
Visually, the signs coincide in that their verbal elements are both one single word
made up of 5 letters, ‘ALANA’/‘AMALA’ both containing three letter ‘A’ in first, third
Decision on Opposition No B 2 829 821 page: 7 of 9
and fifth position, and a letter ‘L’, although in second position in the earlier mark and
fourth position in the contested mark.
The signs differ in the position of the letter ‘L’ and the differing letters ‘N’ and ‘M’.
Furthermore, they differ in the figurative element in the contested mark. However, as
mentioned above, said figurative element is decorative in nature and therefore will
not distract the consumers’ attention from the verbal element ‘AMALA’.
Therefore, the signs are similar to an average degree.
Aurally, the signs (‘A-LA-NA’ vs ‘A-MA-LA’) are made up of three syllables all
containing the same vowel ‘A’. Therefore they have the same rhythm and intonation.
Irrespective of the different pronunciation rules in different parts of the relevant
territory, the pronunciation of the signs coincides in the sound of the first letter ‘A’ and
the syllable ‘LA’ , although the latter being placed in different position in the signs.
The pronunciation differs in the syllable ‘NA’/’MA’ and the syllables ‘LA/LA’ placed in
different position. However, it is noted that the difference between the syllables
‘NA’/’MA’ is not particularly striking in the relevant languages.
Therefore, the signs are similar to a high degree.
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. 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.
d) 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 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.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified (recital 8
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Decision on Opposition No B 2 829 821 page: 8 of 9
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
As it has been found in the previous sections of the present decision, the goods are
partly identical, partly similar and partly dissimilar. The relevant public has an average
degree of attention and the earlier mark has a normal distinctiveness.
The signs are visually similar to an average degree and aurally similar to a high
degree on account of the overall similarity of their verbal elements ‘ANALA’/’AMALA’
which are made up of the same number of letters, four of which coincide. The signs
also differ in the position of the letter ‘L’, the differing letters ‘N/M’ and the figurative
element of the contested sign. However, although these features can create some
visual and aural differences between the marks, their impact is not decisive, also
considering the decorative nature of the figurative element.
In this respect, account is taken of the fact that 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).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the Hungarian- and Polish-speaking public and therefore the
opposition is partly well founded on the basis of the opponent’s international
registration designating the European Union No 1 123 649 ‘ALANA’. 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 or similar to those of the earlier trade mark.
The rest of the contested goods 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 goods cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 829 821 page: 9 of 9
The Opposition Division
Plamen IVANOV
Claudia ATTINA
Keeva DOHERTY
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.