OPPOSITION No B 2 573 593

Lilly A/S, Bugattivej 2, 7100 Vejle, Denmark (opponent), represented by Plesner, Amerika Plads 37, 2100 Copenhagen Ø, Denmark (professional representative)

a g a i n s t

ShenZhen Global Egrow E-Commerce Co., Ltd., RM 201, 2 Floor, Block 8, Zhongxing Industrial Town, Chuangye Road, Nanshan District, Shenzhen, Guangdong, the People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 21/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 573 593 is partially upheld, namely for the following contested goods:

Class 25: Shirts; Stuff jackets [clothing]; Suits; Breeches for wear; Trousers; Outerclothing; Waistcoats; Knitwear [clothing]; Skirts; Overcoats; Jackets [clothing]; Tee-shirts; Camisoles; Dust coats; Down jackets; Footwear; Hosiery; Scarfs; Pelerines; Girdles.

2.        European Union trade mark application No 14 170 773 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 170 773 . The opposition is based on European Union trade mark registrations Nos 580 282 and 4 892 782, and a well-known trade mark in Denmark. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

PRELIMINARY REMARK – EARLIER WELL-KNOWN MARK – ARTICLE 8(2)(c) IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

In cases where the opponent invokes a registered trade mark and claims the same mark in the same country as a well-known mark, this will in general be taken as a claim that its registered mark has acquired a high degree of distinctiveness by use.

In the present case, the opposition is based on European Union trade mark registrations Nos 580 282 and 4 892 782 under Article 8(1)(b) EUTMR. In addition, the opponent has claimed that the same marks are well-known marks in Denmark for goods and services that are entirely included in the specification of these registered marks. Therefore, the Opposition Division considers that the opposition is not based on well-known marks, but rather on registered trade marks for which enhanced distinctiveness is claimed. The examination of the opposition will proceed on this basis.  

ADMISSIBILITY

In its submissions of 21/01/2016, the opponent sent further documentation referring to an earlier mark other than those on which the opposition was originally based and referred to in the opposition notice, namely, a non-registered trade mark used in the course of trade in Denmark, for which the opponent claimed Article 8(4) EUTMR. However, if it was the opponent’s intention to also base the opposition on this additional earlier right, this should have been done within the three-month opposition period, which expired on 04/09/2015. Therefore, the Opposition Division cannot take this earlier right or ground into consideration and will proceed only on the basis of those submitted within the opposition period, namely European Union trade mark registrations Nos 580 282 and 4 892 782.

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 and services

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

European Union trade mark registration No 580 282

Class 25: Religious and festive occasions clothing, footwear and headgear.

European Union trade mark registration No 4 892 782

Class 35: Retail services in the field of clothing, footwear and headgear for religious events and festive occasions, as well as in connection with bridalwear and bridal goods.

The contested goods and services are the following:

Class 25: Shirts; Stuff jackets [clothing]; Suits; Breeches for wear; Trousers; Outerclothing; Waistcoats; Knitwear [clothing]; Skirts; Overcoats; Jackets [clothing]; Tee-shirts; Camisoles; Dust coats; Down jackets; Footwear; Hosiery; Scarfs; Pelerines; Girdles.

Class 35: Ordering services [for others]; Business administration consultancy; Provision of information concerning commercial sales; Auctioneering; Publication of publicity material; Providing an on-line commercial information directory on the internet; Administration of the business affairs of retail stores; Online advertisements; Ordering services for third parties; Promoting the goods and services of others; Business consulting services; Promotional advertising services; Provision of business information; Production of television commercials; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Advertising services; Business management consulting services in the field of information technology; Consulting services in business organization and management; Acquisitions (Business -) consulting services; Business assistance.

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 25

The contested footwear includes, as a broader category, the opponent’s religious and festive occasions footwear. 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 Shirts; Stuff jackets [clothing]; Suits; Breeches for wear; Trousers; Outerclothing; Waistcoats; Knitwear [clothing]; Skirts; Overcoats; Jackets [clothing]; Tee-shirts; Camisoles; Dust coats; Down jackets; Hosiery; Scarfs; Pelerines; Girdles overlap with the opponent’s religious and festive occasions clothing. Therefore, they are identical.

Contested services in Class 35

The contested services are all sorts of services aimed at supporting or helping other businesses to do or improve their business. The contested services include activities such as advertising services which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. They also include business management services such as business management consulting services in the field of information technology which are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. The contested services also encompass ordering services for third parties, which involves the acquisition of goods for others, and auctioneering, which are public sales at which goods are sold to the highest bidder.

The earlier services are retail services for specific kinds of clothing, footwear and headgear. The contested services do not share any points in common with the earlier services since they will not be provided by the same companies, through the same channels or aimed at the same consumers. They are not in competition with each other or complementary either. Therefore, the services at issue are dissimilar. This even holds true for services such as administration of the business affairs of retail stores, which at first glance could be seen as connected with the earlier services. This is because the applicant’s services are intended to help companies with the performance of business operations. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation. So even if they mention ‘retail stores’, the nature of the applicant’s services is very different to the opponent’s.

The contested services are also dissimilar to the earlier goods in Class 25. As a starting point, there are numerous differences between goods and services. By their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist in the provision of intangible activities. Fundamentally, the applicant's services have a different purpose 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 are directed at the public at large. The degree of attention is average.

3. The signs

LILLY
Earlier trade marks	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 element ‘Dress’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier marks consist of the word ‘LILLY’, which will be understood as referring to a type of a flower  (‘Lilly’ will merely be seen as an alternative way of writing ‘Lily’, the usual spelling) or a female first name. Since the earlier marks consist of one word, they have no elements which could be considered more distinctive or dominant than others.

The element ‘Dress’ of the contested sign will be associated with ‘a piece of clothing that covers a woman’s body and part of her legs’ or simply ‘the clothes that someone usually wears’. Bearing in mind that the relevant goods are clothing and footwear, this element is not distinctive for any of the goods, except for ‘footwear’, for which it is weak since although footwear is not a garment, it is still considered to form part of a person’s attire. The element ‘LILY’ of the contested sign will be understood with the same meaning as ‘LILLY’, described above. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. Both ‘Dress’ and ‘Lily’ in the contested sign are perfectly distinguishable owing to the slight stylisation of the words, including each one being written with an initial capital.

Visually, the signs coincide in the letters ‘L-I-L-*-Y’. They differ in the word ‘Dress’ at the beginning of the contested sign, which is non-distinctive and weak, the slight stylisation of the contested sign, and the extra letter ‘L’ in the middle of the earlier marks.

Even though the contested sign has a different beginning, taking the above factors into consideration, the signs are held to be visually similar to a high degree.

Aurally, the earlier marks ‘LILLY’ and the second element of the contested sign, ‘LILY’, will be pronounced identically. The pronunciation differs in the sound of the letters ‘DRESS’ of the contested sign, an element which lacks distinctiveness or is weak as described above.

Even though the contested sign has a different beginning, in view of the above considerations, the signs are held to be aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning through a word which is entirely distinctive in connection with the goods, and in view of the lack of distinctiveness or weakness of the differentiating element in the contested sign, 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 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, 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods at issue have been found identical and the services dissimilar. The signs are visually, aurally and conceptually highly similar.

The signs coincide in the distinctive word ‘LILLY/LILY’, which also carries the memorable concept of a flower or a woman’s name. The fact that the earlier marks contain a double ‘L’ does not change this finding as this will simply be seen as an alternative way of spelling the standard ‘LILY’. Although the contested sign has a different beginning, and this would usually be a factor that could assist in distinguishing between signs, in this case, ‘Dress’ either lacks distinctiveness or is weak in connection with the goods. Therefore, it has a lesser impact overall. Finally, the words ‘Dress’ and ‘Lily’ are perfectly distinguishable in the contested sign owing to the slight stylisation of the words, including each one being written with an initial capital.  

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of English-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations. 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 to those of the earlier trade marks.

The rest of the contested services 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 services cannot be successful.

Since the opposition is partially 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 extensive use or reputation as claimed by the opponent and in relation to identical goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant  establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in Denmark.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 28/05/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Denmark prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

European Union trade mark registration No 580 282

Class 25: Religious and festive occasions clothing, footwear and headgear.

European Union trade mark registration No 4 892 782

Class 35: Retail services in the field of clothing, footwear and headgear for religious events and festive occasions, as well as in connection with bridalwear and bridal goods.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 21/01/2016, the opponent submitted the following evidence:

• Printouts from the opponent’s website www.lilly.eu telling the story of the trade mark ‘LILLY’.

• Printouts from the opponent’s website www.lilly.eu showing LILLY shops and where to buy LILLY products in the EU.

• A survey from Gallup A/S from 2000. The following appears under the ‘Main Findings’ in Section 2:

‘The survey shows a very high degree of brand awareness for LILLY in the population in general (87%). This is very convincing primarily in regards to the competitors. This implies that with regards to brand name wedding dresses, LILLY is the only proper brand to be found on the market. This is especially true as LILLY has ‘Top of Mind’ awareness level of 65% among the entire population, which is an indication of a strong brand (…)’.

• Catalogues from 2002, 2006, 2009, 2010, 2011 and 2012 showing clothing bearing the earlier marks, mainly bridal wear.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Despite showing some use of the trade marks, the evidence provides little information on the extent of such use. The evidence consisting of printouts from the opponent’s website and catalogues does not provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade marks or the extent to which the trade marks have been promoted. Although the opponent has filed a survey which mentions recognition of the earlier marks in Denmark, the Opposition Division finds that the survey is dated in 2000, which means that it was carried out 15 years before the filing of the contested sign. Without disputing that there might have been market recognition of the marks in 2000, the opponent has not backed up its claim of a continued reputation with any other compelling evidence. The Opposition Division, on the basis of the scarce evidence before it, finds it impossible to draw the conclusion that the earlier marks still enjoy recognition, and perhaps reputation, in Denmark up to the filing date of the contested application.  Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as regards this ground of the opposition.

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

The Opposition Division

Marta GARCÍA COLLADO

Lucinda CARNEY

Vanessa PAGE

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.