OPPOSITION No B 2 689 159
Marques de l'Etat De Monaco – Monaco Brands, L'estoril 31 Avenue Princesse Grâce, 98000 Monaco, Monaco (Opponent), represented by Nony, 11, Rue Saint Georges, 75009 Paris, France (Professional Representative)
A G A I N S T
Marco Limoncelli, Piazza Cavour 16, 80137 Naples, Italy (Applicant),
On 10/03/2017, the Opposition Division takes the following
1. Opposition No B 2 689 159 is upheld for all the contested goods, namely
Class 3: Essential oils and aromatic extracts; Perfume.
Class 25: Clothing.
2. European Union trade mark application No 15 028 517 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 028 517 namely against all the goods in Classes 3 and 25. The opposition is based on International trade mark registration No 1 223 644 designating the European Union and International registration No 1 069 076 designating the European Union and France. The opponent invoked Article 8(1)(b), and 8(5) EUTMR in relation to the latter only.
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 goods
The goods on which the opposition is based are the following:
- International registration N° 1 223 644 designating the European Union
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
- International registration N° 1 069 076 designating the European Union covers a limited list of goods (as shown in the certificate):
Class 25: Clothing excluding swimsuits and bath robes; footwear excluding slippers; headgear excluding headbands (clothing), berets and bathing caps; hosiery and caps (headwear).
The French designation covers:
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 3: Essential oils and aromatic extracts; Perfume.
Class 25: Clothing.
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 3
The contested perfume is included in the broad category perfumery of the opponent. It is identical.
The contested essential oils are identically contained in both lists of goods.
The contested aromatic extracts are highly similar to essential oils, the main differences between aromatic extracts and essential oils being about their production methods. They have the same purpose and method of use, and they can coincide in producers, distribution channels and end users. Moreover, they are in competition.
Contested goods in Class 25
The contested clothing is identically contained in the list of International registration designating France No 2) and is broader than the Clothing excluding swimsuits and bath robes of International registration No 1), but since the opposition division cannot dissect the broader list of the applicant, it is deemed identical.
- 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 highly similar are directed at the public at large. The degree of attention is considered to be average
- The signs
Earlier trade marks
The relevant territory is the European Union and France.
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.
Taking into account the different pronunciations and understanding of the marks in several languages, the Opposition Division finds it appropriate in this case to focus the comparison of the signs on the French speaking part of the public.
The earlier trade marks are verbal while the contested trade mark is figurative, composed of a coat of arms with Latin words (ARDET EXCITA VIRTUS) and above it, the words AQUA- MONTE-CARLO in close to standard characters.
The common element ‘MONTE-CARLO’ of the marks will be understood as the famous capital of the State of Monaco by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The earlier marks have no elements that could be considered clearly more distinctive or dominant than other elements.
The Latin elements ‘AQUA’ and ‘ARDET EXCITA VIRTUS’ in the contested sign will not be understood and these later elements would probably not be read nor pronounced due to their position inside the coat of arms. Because of their position, the words AQUA- MONTE CARLO have an equal visual importance compared to the coat of arms, even if it is bigger in size. In addition, 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).
The contested sign has no elements that could be considered clearly more distinctive or more dominant than other elements.
Visually and phonetically, the signs coincide in ‘MONTE-CARLO’ which is distinctive, is the only element of the earlier trade marks and is fully included on the top of the contested sign. Due to the element AQUA also pronounced, the signs are similar to an average degree (as previously mentioned, it is not likely that ARDET EXCITA VIRTUS would be pronounced).
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to ‘MONTE-CARLO’, the signs are conceptually similar to a high degree. The coat of arms does not alter the common significance, nor does the Latin words that would not be understood.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent, earlier international registration No 1 069 076 designating the EU and France has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.
- Global assessment, other arguments and conclusion
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
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 and 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The contested goods are partly identical and partly highly similar to the opponent’s goods. The degree of attention of the relevant public is deemed average.
The verbal element of the earlier marks, ‘MONTE-CARLO’ is reproduced on top of the contested sign. Despite the additional elements in the contested sign, the signs have been found conceptually highly similar.
Taking into account that the visual degree of similarity between the marks is average and the aural degree as well, that the degree of distinctiveness of the earlier trade marks is average and that the goods are identical and highly similar, the Opposition Division considers that there exists a likelihood that the marks will be confused on the market by, at least, the French-speaking part of the public.
As stated above in section b) 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 International trade mark registrations. It follows that the contested trade mark must be rejected for all the contested goods.
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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.