OPPOSITION DIVISION
OPPOSITION No B 2 827 189
Grupo Mascaró, S.L., Plaza Principe Juan Carlos I, 3, 07750 Ferrerias, Balearic
Islands, Spain (opponent), represented by Jose Ramon Trigo, S.L., Gran Via, 40, 6º
2, 28013 Madrid, Spain (professional representative)
a g a i n s t
Grand Step (HK) Ltd, Room 807,Harbour Crystal Centre,100Granville Road, TST
East, 000 The Hong Kong special administrative region of the People’s Republic of
China (applicant), represented by Katarzyna Binder-Sony, First Floor, 3 More
London Riverside, London SE1 2RE, United Kingdom (professional representative).
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 827 189 is upheld for all the contested goods.
2. European Union trade mark application No 15 635 451 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 (in Classes 18 and 25) of
European Union trade mark application No 15 635 451 (word mark:
“DIRTY BALLERINA”). The opposition is based on, inter alia, European Union trade
mark registration No 8 117 038 (figurative mark:
“ ”) and No 13 642 558 (figurative mark:
“ ”. The opponent invoked Article 8(1)(b) and 8(5) EUTMR for
European Union trade mark registration No 8 117 038 and only Article 8(1)(b)
EUTMR for European Union trade mark registration No 13 642 558.
Decision on Opposition No B 2 827 189 page: 2 of 7
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.
a) The goods
The goods in Classes 18 and 25 on which the opposition is based are the following:
European Union trade mark registration No 8 117 038
Class 25: Clothing, footwear, headgear.
European Union trade mark registration No 13 642 558
Class 18: Leather and his/her imitations; animal skins, hides; handbags, bags,
satchels, credit-card cases, briefcases, trunks and travelling bags, purses, travel
bags, backpacks, book bags, bags for footwear, bumbags, pocket wallets, bags with
handles, credit-card holders, carrying boxes, key rings (leatherware) and suitcases;
umbrellas and parasols; walking sticks; leads and clothing for animals; gym bags,
toiletry bags, vanity cases, not fitted and vanity cases, sold empty.
The contested goods in Classes 18 and 25 are the following:
Class 18: Handbags, purses and wallets; ladies handbags; evening handbags;
gentlemen’s handbags; bags; casual bags; athletics bags; gym bags; travel bags;
sport bags; beach bags.
Class 25: Clothing, namely, belts, bras, corsets, dresses, gowns, hats, jackets,
pyjamas, pants, scarves, shawls, shirts, shoes, skirts, sweaters, tank tops, tube tops,
underwear, vests; Footwear, namely, athletic footwear, beach footwear, bridal
footwear, casual footwear, work footwear, formal footwear, children’s footwear,
evening footwear, exercise footwear, medical personnel footwear, outdoor footwear,
rain footwear, ski footwear, sports footwear; Headgear, namely, berets, hats, caps.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
However, the term ‘namely’, used in the applicant’s list of goods to show the
relationship of individual goods to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
Contested goods in Class 18
Handbags; bags are identically contained in both lists of goods.
The contested purses overlap with the opponent’s bags. Therefore, they are identical.
Decision on Opposition No B 2 827 189 page: 3 of 7
The contested wallets overlap with the opponent’s pocket wallets. Therefore, they are
identical.
The contested ladies handbags; evening handbags; gentlemen’s handbags are
included in the broad category of the opponent’s handbags. Therefore, they are
identical.
The contested casual bags; athletics bags; gym bags; travel bags; sport bags; beach
bags are included in the broad category of the opponent’s bags. Therefore, they are
identical.
Contested goods in Class 25
The contested clothing, namely, belts, bras, corsets, dresses, gowns, hats, jackets,
pyjamas, pants, scarves, shawls, shirts, skirts, sweaters, tank tops, tube tops,
underwear, vests are included in the broad category of the opponent’s clothing.
Therefore, they are identical.
The contested footwear, namely, athletic footwear, beach footwear, bridal footwear,
casual footwear, work footwear, formal footwear, children’s footwear, evening
footwear, exercise footwear, medical personnel footwear, outdoor footwear, rain
footwear, ski footwear, sports footwear; clothing, namely shoes are included in the
broad category of the opponent’s footwear. Therefore, they are identical.
The contested headgear, namely, berets, hats, caps are included in the broad
category of the opponent’s headgear. 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 are directed at the public at
large. The degree of attention is average.
c) The signs
DIRTY BALLERINA
Earlier trade mark(s) Contested sign
Decision on Opposition No B 2 827 189 page: 4 of 7
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 common elements “PRETTY/DIRTY” are not meaningful in certain territories, for
example in those countries where English is not understood. Consequently, the
Opposition Division finds it appropriate to focus the comparison of the signs on the
Spanish/Portuguese-speaking part of the public such as Spain and Portugal.
The contested sign is a word mark, which is protected in all different typefaces.
The earlier trade marks are figurative marks. They consist of the words ‘Pretty’ and
‘Ballerinas’, written together in a special typeface. The second earlier trade mark
depicts a pair of shoes/slippers on a pink background.
The common elements “BALLERINA” and the depiction of the footwear in one of the
earlier trade marks will be associated with ‘slip models” (Spanish and Portuguese:
bailarina). Bearing in mind that the relevant goods are footwear, this element is non-
distinctive for part of these goods, namely for footwear of the earlier trade mark and
footwear, namely, athletic footwear, formal footwear, exercise footwear casual
footwear, children’s footwear, exercise footwear, sports footwear of the contested
sign.
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).
Visually, the signs coincide in the elements “BALLERINA”, though written in a
different type face in the earlier trade marks. They differ in the additional figurative
elements of the earlier trade marks and in the different first words “DIRTY” and
“PRETTY” of the signs. Therefore, there is a below average degree of visual
similarity. The degree of similarity is lower for those goods, which are non-distinctive
(see above).
Aurally, the figurative elements will not be pronounced. The signs will be spoken
highly similar as regards the words “BALLERINA(S)”. The signs differ as regards the
different words “DIRTY” and “PRETTY”. Therefore, there is an average degree of
aural similarity. The degree of similarity is lower for those goods, which are non-
distinctive (see above).
Conceptually, the signs have the same identical meaning as regards the words
Decision on Opposition No B 2 827 189 page: 5 of 7
“BALLERINA(S)”. These words and the depiction of the shoes/slip model cannot be
taken into account in a relevant manner for those goods, which are non-distinctive.
For the rest of the distinctive goods, these elements lead to similarities
(BALLERINA(S)) respectively differences (depiction of the shoes) between the signs.
The other elements of the marks are meaningless. Therefore, there is an average
degree of conceptual similarity. The degree of similarity is lower for those goods,
which are non-distinctive (see above).
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(s)
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, the earlier marks have been extensively used and enjoy
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 mark will rest on its
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 mark must be seen as
normal, despite the presence of a non-distinctive element in the marks, as stated
above in section c) of this decision, for a part of the goods.
e) Global assessment, other arguments and conclusion
The essential function of the trade mark is to guarantee the identity of the origin of
the marked product for the consumer or end user by enabling him, without any
likelihood of confusion, to distinguish a product or service from others which have
another origin. For the trade mark to be able to fulfil its essential role in the system of
undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee
that all the goods or services showing the mark have originated under the control of a
single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon,
EU:C:1998:442, § 28; see also recital 7 of the EUTMR).
The appreciation of a likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the trade mark on the
market, the association which can be made with the used or registered sign, and the
degree of similarity between the trade mark and the sign 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).
Such a global assessment of a likelihood of confusion implies some interdependence
between the relevant factors, and in particular a similarity between the trade marks
and between the goods or services. Accordingly, a greater degree of similarity
between the goods may be offset by a lower degree of similarity between the marks,
and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20;
Decision on Opposition No B 2 827 189 page: 6 of 7
11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon,
EU:C:1998:442, § 17).
The contested goods are identical.
The signs are visually, aurally and conceptually at most similar to an average degree.
Taking into account the visual, aural and conceptual similarities between the signs,
the normal degree of distinctiveness of the earlier trade mark, the identical goods and
the not more than average degree of attention of the public, there is a likelihood of
confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition
is upheld.
The applicant has not filed any observations. Therefore, its arguments cannot be
examined.
Considering all the above, there is a likelihood of confusion on the part of the
Spanish/Portuguese-speaking part of the 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.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier marks, there is no need to assess the enhanced degree of distinctiveness of
the opposing marks due to their reputation as claimed by the opponent. The result
would be the same even if the earlier marks enjoyed an enhanced degree of
distinctiveness.
As the earlier rights “ ” and “ ” lead to
the success of the opposition and to the rejection of the contested trade mark for all
the goods against which the opposition was directed, there is no need to examine the
other earlier rights invoked by the opponent (16/09/2004, T 342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b)
EUTMR, there is no need to further examine the other ground of the opposition,
namely Article 8(5) EUTMR.
The opposition is well founded under Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 827 189 page: 7 of 7
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.
The Opposition Division
Lynn BURTCHAELL
Peter QUAY Karin KLÜPFEL
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.