OPPOSITION No B 2 705 005

Detlev Louis Motorrad-Vertriebsgesellschaft mbH, Rungedamm 35, 21035 Hamburg, Germany (opponent), represented by RGTH Patentanwälte PartGmbB, Neuer Wall 10, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Kaga Kenji, Viale Giuseppe Mazzini 45, Fi Firenze, Italy (applicant), represented by Leonardo Marconi, Viale Giuseppe Mazzini 45, 50132 Firenze, Italy (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 705 005 is partially upheld, namely for the following contested goods:

Class 18:        Umbrellas and parasols; studs of leather; straps for soldiers' equipment; straps made of imitation leather; shoulder straps; leather laces; leather straps; straps for skates; leather thread; chin straps, of leather; shoulder belts [straps] of leather; luggage, bags, wallets and other carriers; tie cases.

Class 25:        Clothing; headgear; hats; footwear; cravats; ascots; silk ties; bolo ties.

2.        European Union trade mark application No 15 142 995 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 142 995, namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 10 588 044, German trade mark registration No 2 019 175 and Austrian trade mark registration No 263 854. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 588 044.

1. The goods

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

Class 18:        Goods of leather and imitations of leather (included in class 18), namely bags and other containers not specifically designed for the objects being carried, small leather goods (included in class 18), namely purses, pocket wallets; key wallets; tool bags of leather, empty, leather laces, trunks and travelling bags, umbrellas and walking sticks; rucksacks and bags (included in class 18) for motorcyclists.

Class 25:        Clothing, in particular clothing of leather and textiles for motorcyclists, jackets, trousers, combinations beings matching jackets and trousers, underwear, t-shirts, sweatshirts, denim clothing of all kinds, wraps, gloves; protective kidney belts, leather caps, caps, baseball caps, boots, shoes, shoes for athletics, headgear, balaclava hats; swimwear, clothing made from imitations of leather; inner soles; mittens; belts; braces; jump suits; rainwear; shawls; sashes for wear; stockings; clothing of textile, all the aforesaid goods included in class 25; thermal motorcycle jackets, thermal motorcycle trousers, thermal motorcycle combinations, including one-piece clothing; articles of clothing for sports and leisure wear.

Class 26:        Badges for wear, not of precious metal, armlets, ornamental novelty badges (buttons), fringes, belt clasps, competitors' numbers, zip fasteners.

Class 28:        Elbow guards [sports articles]; knee guards [sports articles]; protective paddings (sports equipment); shin guards [sports articles]; abdomen guards (sporting articles); chest guards (sports equipment); back protectors (sports equipment); shoulder pads (sports equipment); wrist guards (sports equipment); shields (sporting articles); knee and shin protectors (sports equipment), decorations for Christmas trees, models of vehicles, remote-control vehicles (toys), card games, stuffed animals, puzzles, rocking horses, toys.

The contested goods are the following:

Class 18:        Saddlery, whips and animal apparel; sausage skins and imitations thereof; umbrellas and parasols; studs of leather; straps for soldiers' equipment; kid; leatherboard; girths of leather; straps made of imitation leather; shoulder straps; leather laces; leather straps; straps for skates; leather, unworked or semi-worked; leather for harnesses; leather for shoes; leather thread; moleskin [imitation of leather]; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; casings, of leather, for springs; trimmings of leather for furniture; harness fittings; imitation leather; chin straps, of leather; rawhide chews for dogs; worked or semi-worked hides and other leather; shoulder belts [straps] of leather; luggage, bags, wallets and other carriers; tie cases.

Class 25:        Clothing; headgear; hats; footwear; cravats; ascots; silk ties; bolo ties.

An interpretation of the wording of the list of the opponent’s goods is required to determine the scope of protection of these goods.

The term ‘in particular’ and ‘including’, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Furthermore, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Leather laces; umbrellas; bags are identically contained in both lists of goods.

The contested wallets include, as a broader category the opponent’s small leather goods (included in class 18), namely pocket wallets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested other carriers overlap with the opponent’s goods of leather and imitations of leather (included in class 18), namely other containers not specifically designed for the objects being carried, as they could both be containers for the general purpose of carrying goods, without being specifically shaped for certain goods. It follows that these are identical.

The contested luggage includes a variety of carriers that could be used for carrying luggage. The opponent’s trunks are large packing cases or boxes that clasp shut, used as luggage or for storage. The contested goods overlap with the opponent’s ones. It follows that these are identical.

The opponent’s umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod and the contested parasols are light umbrellas carried for protection from the sun. The goods in comparison coincide in their nature and purpose. They, furthermore, share the producer, end user and distribution channels. It follows that these are similar.  

The contested tie cases are cases designed to be used for placing ties when travelling, as to avoid wrinkling the fabric. The opponent’s travelling bags are containers that are used for carrying belongings while travelling. The goods in comparison coincide in their nature and purpose, namely being containers for carrying belongings when travelling. They could furthermore coincide in producer, end user and distribution channels. It follows that these are similar.

The contested studs of leather; straps for soldiers' equipment; straps made of imitation leather; shoulder straps; leather straps; straps for skates; leather thread; chin straps, of leather; shoulder belts [straps] of leather are specific articles made of leather or imitation thereof to support or mend clothes, headgear or shoes (and skates) and/or to allow them serve their practical purpose. The opponent’s leather laces are also leather goods, which coincide in their general purpose with the one of the contested goods. The goods in comparison could also coincide in their producer, end user and distribution channels. It follows that these are similar.  

The contested saddlery, whips and animal apparel; girths of leather; harness fittings; rawhide chews for dogs are horse and pets supplies and accessories, that are used for a variety of purposes, such as driving animals or to serve as dog’s treat. The contested trimmings of leather for furniture are pieces of leather used for the decoration of furniture and the contested casings, of leather, for springs are specific articles made of leather and used as a sheath for springs. The contested sausage skins and imitations thereof are goods used as casings for sausage meat. Even though some of the contested goods can coincide in material with some the opponent’s goods, they serve very different purposes. They do not usually have the same retail outlets and are not usually made by the same manufacturers. They are neither complementary nor in competition. These goods are, therefore, considered dissimilar to the opponent’s goods in Classes 18, 25, 26 and 28.

Finally, the contested kid; leatherboard; leather, unworked or semi-worked; leather for harnesses; leather for shoes; moleskin [imitation of leather]; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; imitation leather; worked or semi-worked hides and other leather 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 the opponent’s shoes in Class 25) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels are different. 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; they are of a different nature and serve a different purpose from the opponent’s goods in Classes 18, 25, 26 and 28. Therefore, these goods are dissimilar.

Contested goods in Class 25

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

The contested cravats; ascots; silk ties; bolo ties are included in the broader category of the opponent’s clothing. These are, therefore, considered identical. 

The contested hats are included in the broader category of the opponent’s headgear. These are, therefore, considered identical. 

The contested footwear includes, as a broader category the opponent’s boots, shoes, shoes for athletics. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s 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 or similar are directed at the public at large, but also at some business customers, such as tailors or shoe makers (e.g. the opponent’s leather laces and the contested straps made of imitation leather in Class 18). The degree of attention is considered to be average.

3. The signs

Vanucci                                

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 for reasons of procedural economy and in order to avoid examination of specific meanings (or the lack of such) of the marks for different parts of the relevant public, to focus the comparison of the signs on the Danish-speaking part of the relevant public, for which all the elements of the signs in comparison are likely to be perceived as having a certain meaning.  

The earlier mark is a word mark consisting of the element ‘Vanucci’, which is likely to be perceived by the relevant part of the public as a foreign surname, probably of Italian origin, unconnected to the relevant goods.

The contested sign is a figurative sign, consisting of the elements ‘Atto’ and ‘Vannucci’, written in italic, slightly stylised title-case letters; and underneath them is situated the element ‘FIRENZE’, written in bold upper case letters in a rather standard typeface. The stylisation of the letters of the elements ‘Atto’ and ‘Vannucci’, even though existing, would not divert the attention of the consumer from the letters as such.

Furthermore, the elements ‘Atto’ and ‘Vannucci’, taken together in their sequence, are likely to be perceived as a given name and a surname, probably of Italian origin. The elements ‘Atto’ and ‘Vannucci’ (separately or in their combination) are not descriptive, allusive or otherwise weak for the relevant goods and are, therefore, distinctive.

Finally, the element ‘FIRENZE’ in the contested sign will be perceived by the relevant part of the public as a reference to the Italian city Florence. Bearing in mind that the relevant goods are goods for wear (e.g. on the body or for holding belongings), accessories and parts thereof, this element is non-distinctive for these goods, as it will be perceived as an indication of their geographical origin.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the sequence of letters ‘Van*ucci’, forming the entire earlier sign and seven out of eight letters in the element ‘Vannucci’ in the contested sign. The signs differ in the fourth letter ‘n’ of the element ‘Vannucci’ (which difference, however, at aural level is likely to remain unperceived by the relevant part of the public), and in the elements ‘Atto’ and ‘FIRENZE’ (the latter being non-distinctive) of the contested sign, which have no counterparts in the earlier mark.  

Therefore, the signs are visually and aurally similar at least to an average degree considering the coincidences between the only element of the earlier mark and the distinctive element ‘Vannucci’ of the contested sign.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Furthermore, due to coincidences of the only element ‘Vanucci’ of the earlier mark and the element ‘Vannucci’ of the contested sign, which is further preceded by the element ‘Atto’, it is likely that the relevant part of the public would understand both signs as referring to the same person, as the earlier mark could be seen as a reference to the surname and the contested- to the first name and the surname. The signs differ in the concept of the element ‘FIRENZE’ of the contested sign, however being non-distinctive for the relevant goods.

It follows that the signs are conceptually similar to a high 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 relevant part of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

As has been concluded above, the contested goods are partly identical, partly similar and partly dissimilar to those of the earlier mark. The degree of attention would be average when choosing the relevant goods.

It is taken into account that, 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.

Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. It has been also established above that the signs are visually and aurally similar at least to an average degree, due to the coincidences between the only element of the earlier mark and the element ‘Vannucci’ of the contested sign.

As far as the rest of the elements of the contested sign are concerned, the other distinctive verbal element of the latter, namely ‘Atto’, complements the meaning of the element ‘Vannucci’, as their combination forms the forename and the surname of a given person; while the element ‘FIRENZE’ of the contested sign is non-distinctive as it refers to the origin of the goods in question. Furthermore, the coincidences between the only element ‘Vanucci’ of the earlier mark and the element ‘Vannucci’ of the contested sign and the fact that the contested sign includes the element ‘Atto’ are likely to lead the relevant part of the public to perceive both signs as referring to the same person.

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). Therefore, due to the coincidences between the signs, when consumers encounter the signs at different times, they may assume that the signs have the same origin or at least economically linked origins.  

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Danish-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 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.

The opponent has also based its opposition on the following earlier trade marks: German trade mark registration No 2 019 175 ‘VANUCCI’ for the following goods in Class 25: clothing for motorcyclists; and Austrian trade mark registration No 263 854 ‘VANUCCI’ for the following goods in Class 26: badges (not of precious metal); badges; armbands; buttons (buttons); borders; buckles; boarders and healds; edgings; keychains; and Class 28 elbow pads (sporting goods); knee pads (sports); protective pads (sports equipment); shin guards (sports articles); groin protectors (sports); chest protectors (sports equipment); back protectors (sports equipment); shoulder guards (sports equipment); wrist guards(sports equipment); protective equipment (sports equipment); knee shin guards (sports equipment); Christmas tree ornaments; vehicle models; remote controlled vehicles (toys); card games; plush toys; puzzles; rocking horses; toys.

The other earlier rights are identical to the one already compared above. The earlier German trade mark covers a narrower scope of goods than the earlier right already compared above. The earlier Austrian trade mark covers some additional goods, which are not included in the list of the earlier sign already compared above, such as keychains in Class 26. The remaining contested goods, however, are clearly dissimilar to the additionally covered by the Austrian trade mark goods, as they have different nature, purpose and distribution channels; they usually have a different origin and are neither in competition, nor necessarily complementary to the opponent’s goods. It follows that the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and those other earlier rights.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Elisa ZAERA CUADRADO

Irina SOTIROVA

Julie GOUTARD

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.