OPPOSITION No B 2 728 791

Dolce Vita Footwear, Inc., 52-16 Barnett Avenue, Long Island City, New York 11104, United States of America (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

B & B s.n.c. di Bianchi Lorenzo & C., Via C. Berti 33, 52020 Laterina (AR), Italy (applicant), represented by Simone Fabbriciani, Piazza Guido Monaco 11, 52100 Arezzo, Italy (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 728 791 is partially upheld, namely for the following contested goods:

Class 25: Robes; gowns; trousers; jackets [clothing]; skirts; shirts; chemisettes; coats; ready-to-wear clothing. 

2.        European Union trade mark application No 15 263 163 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 all the goods of European Union trade mark application No 15 263 163. The opposition is based on European Union trade mark registration No 14 770 044. 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.

1. The goods

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

Class 18:  Bags.

The contested goods are the following:

Class 25:   Robes; pyjamas; baby doll pyjamas; underwear; nightwear; lounging robes; bed jackets; nighties; nightcaps; gowns; trousers; jackets [clothing]; skirts; shirts; chemisettes; coats; hats; ready-to-wear 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.

The contested robes; gowns; trousers; jackets [clothing]; skirts; shirts; chemisettes; coats; ready-to-wear clothing are various clothing products, while the contested hats are headgear products. Clothing and headgear in Class 25 are (in general) used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

Goods such as bags, for instance handbags, in Class 18 are related to articles of clothing and headgear in Class 25. This is because consumers are likely to consider bags as accessories that complement articles of outer clothing and headgear 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 and headgear to directly produce and market related to goods such as the opponent’s bags. Moreover, these goods can be found in the same retail outlets. Therefore, the abovementioned contested goods are considered similar to the opponent’s bags in Class 18.

The contested pyjamas; baby doll pyjamas; underwear; nightwear; lounging robes; bed jackets; nighties; nightcaps are deemed to be dissimilar to the opponent’s bags in Class 18. The dissimilarity between these contested goods and the earlier bags (unlike the abovementioned contested goods where similarity is found) results from the fact that these goods do not contribute to the external image of the consumers concerned and for this reason are not complemented by fashion accessories of any kind. Although all these goods may be found in the same stores they are usually sold in different parts of those stores. Finally, it is unlikely that these goods are manufactured by the same undertaking.

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 similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

DOLCE VITA
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 earlier mark (a word mark) is composed of ‘DOLCE VITA’, that will be understood by a significant part of the relevant public in the relevant territory, as a commonly used Italian expression meaning ‘sweet life’. This is for example clearly the case for the French-, Italian- and Spanish-speaking part of the public. For the relevant goods, such a meaning is not descriptive or of limited distinctiveness, therefore, the earlier mark is distinctive to an average degree.  

The verbal elements of the contested sign (a figurative mark), will also be perceived with the same meaning by a significant part of the public in the relevant territory as in the earlier mark, although ‘Dolcevita’ is present as a single element in the sign and is not split into two words. In the sign, ‘Dolcevita’ is depicted in an arched and slightly stylised font and is also distinctive in relation to the goods at issue. Furthermore, the sign contains a distinctive depiction of two cherries, which are equally visually dominant in the sign as its verbal elements. Below the word and figurative elements, there is a green curve with the Italian ‘tricolore’ in the middle. These elements are merely decorative, with a reference to the origin of the goods (i.e. Italy), and are less distinctive and important for the overall perception of the sign.

The Opposition Division will in the following focus on the part of the public that understands the meaning of ‘DOLCE VITA’ in both signs, for example, the French-, Italian- and Spanish-speaking part of the relevant public.  

Visually, the signs coincide in that they include the distinctive verbal elements ‘DOLCE( )VITA’. They differ in the graphical presentation of the contested sign, that is, how ‘Dolcevita’ is depicted in the sign, the distinctive two cherries and the less distinctive decorative green curve and Italian ‘tricolore’. However, 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, the Opposition Division finds the signs visually highly similar.

Aurally, ‘DOLCE( )VITA’ will be pronounced identically in both signs. The fact that the earlier mark consists of two separate elements while the contested sign contains a single verbal element does not influence this finding.

Conceptually, the public taken into consideration will perceive both signs as containing the Italian (and distinctive) expression ‘sweet life’. The signs differ in the distinctive concept of two cherries, present in the contested sign. The decorative curve and the Italian ‘tricolore’ will have limited impact on the conceptual comparison of the signs (for the reasons explained above). Therefore, the signs are conceptually highly similar.  

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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

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.

In the present case, the goods are partly similar and partly dissimilar. The signs are visually highly similar and aurally identical. They are also highly similar conceptually for the part of the public taken into account. Moreover, the earlier mark is distinctive and the relevant public’s degree of attention is average. In this regard, 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, there is a likelihood of confusion on the part of the public that understands the verbal elements in both signs (e.g. the French-, Italian- and Spanish-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.

It follows from the above that the contested trade mark must be rejected for the goods found to be 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 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

Boyana NAYDENOVA

Christian RUUD

Catherine MEDINA

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.