OPPOSITION No B 2 709 668

BNU Textiles Limited, 3rd Floor 207 Regent Street, London W1B 3HH, United Kingdom (opponent).

a g a i n s t

Brand Diffusion S.r.l., Via Gabriele D'Annunzio 26, 25084 Orzinuovi (BS), Italy (applicant), represented by Con Lor Spa, Via Renato Fucini 5, 20133 Milano, Italy (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 668 is partially upheld, namely for the following contested goods:

Class 25:        Clothing; Footwear; Headgear; Clothing of imitations of leather; Leather clothing; Berets; Training shoes; Hats; Belts [clothing]; Money belts [clothing]; Gloves [clothing]; Bath sandals; Esparto shoes or sandals; Bath shoes; Gymnastic shoes; Beach shoes; Knee-high stockings; Half-boots; Lace boots; Boots; Wooden shoes.

2.        European Union trade mark application No 15 137 102 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 goods of European Union trade mark application No 15 137 102, , namely against all the goods in Class 25. The opposition is based on Benelux trade mark registration No 985 611, ‘Emanuele’. 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 25:        Clothing; footwear; headgear; swimwear; sportswear; leisurewear.

The contested goods are the following:

Class 25:        Clothing; Footwear; Headgear; Clothing of imitations of leather; Leather clothing; Berets; Training shoes; Hats; Belts [clothing]; Money belts [clothing]; Fittings of metal for footwear; Gloves [clothing]; Welts for footwear; Tips for footwear; Bath sandals; Esparto shoes or sandals; Bath shoes; Gymnastic shoes; Beach shoes; Knee-high stockings; Half-boots; Lace boots; Boots; Footwear soles; Heels; Heelpieces for footwear; Footwear uppers; Wooden shoes.

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

Clothing; Footwear; Headgear are identically contained in both lists of goods.

The contested Clothing of imitations of leather; Leather clothing; Belts [clothing]; Money belts [clothing]; Gloves [clothing]; Knee-high stockings  are included in the broad category of the opponent’s Clothing. Therefore, they are identical.

The contested Berets; Hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested Training shoes; Bath sandals; Esparto shoes or sandals; Bath shoes; Gymnastic shoes; Beach shoes; Half-boots; Lace boots; Boots; Wooden shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested Fittings of metal for footwear; Welts for footwear; Tips for footwear; Footwear soles; Heels; Heelpieces for footwear; Footwear uppers are parts and fittings for footwear. Unlike the opponent´s goods in Class 25 they are not directed at the end consumer but at business consumers who may further process and use them in the manufacture or repair of footwear. They differ in their nature, purpose, method of use, relevant public and distribution channels from the goods of the earlier mark. Therefore, they are dissimilar to all the opponent’s goods in Class 25.

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 considered to be average.

3. The signs

Emanuele
Earlier trade mark	Contested sign

The relevant territory is the Benelux territory.

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 earlier mark is a word mark, ‘Emanuele’.

The contested sign is a figurative mark with the verbal elements ‘Emanuele’ and ‘Santarelli’. The figurative aspect of the mark is limited to the stylisation of the verbal elements and is as such weak and has limited impact on the comparison.

Although the Italian male first name ‘Emanuele’ does not exist in the Benelux territories, the relevant public will nevertheless perceive it as a first name in the earlier mark, a female first name to be precise, since they will associate it with the French name ‘Emmanuelle’, either because they know a famous film with that title, or because they know this female French name, French being a language spoken in part of the Benelux. There is no relationship between such meaning and the goods, therefore ‘Emanuele’ is a distinctive element. Furthermore, it is noted that neither ‘Emmanuelle’ nor ‘Emanuele’ is a common first name in the Benelux.

‘Emanuele’ will be perceived the same way in the contested sign. The second verbal element ‘Santarelli’, due to its position after the first name ‘Emanuele’ and ending, will most likely be perceived as a foreign (Italian) surname and is also distinctive in relation to the relevant goods. The contested sign contains no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘Emanuele’, which constitutes the whole earlier mark and the first verbal element of the contested sign. They differ in the second verbal element of the contested sign, ‘Santarelli’, and the stylisation of the same mark. However, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory (French, German and Dutch are spoken in the relevant territory), the pronunciation of the signs coincides in the sound of the verbal element ‛Emanuele’, present identically in both signs as the sole element of the earlier mark and the first part of the contested sign. The pronunciation differs in the sound of the second verbal element, ‛Santarelli’ of the contested sign, which has no counterpart in the earlier mark. Considering that generally consumers tend to focus on the first element of a sign when being confronted with a trade mark, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs consist of or include the same female name, which, as stated above, is not a frequent used name and also written with the same unusual spelling. Bearing in mind the additional concept of the surname in the earlier mark, the signs are conceptually similar to a low 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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 of art. 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, 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; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are partly identical and partly dissimilar. The goods are directed at the public at large with a degree of attention that is considered to be average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally, the marks in dispute have been found visually and aurally similar to an average degree and conceptually lowly similar.

It is true, as pointed out by the applicant, that family names have in principle a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who do not have anything in common, whereas the presence of the same surname could imply the existence of some link between them (identity of the persons or a family link). Therefore, consumers tend to pay more attention to family names than to first names and are less likely to confuse marks that share the same first name. However, as stated above, the common element ‘Emanuele’ in the current case is not regarded a common first name in the relevant territory. Furthermore, the spelling of the coinciding first name is the same, despite the fact that it differs from the usual spelling ‘Emmanuelle’ that the public is likely to be acquainted with. In addition, this coinciding verbal element is not less distinctive than the second, differing, verbal element of the contested sign, ‘Santarelli’.

On the contrary and unlike the case-law referenced by the applicant (R 0095/2000-2, LLAURA MERCIER), when a given first name is likely to be perceived as uncommon in the relevant territory, the presence of this uncommon element is likely to be the focus of the consumers’ attention and they could be misled into attributing a common origin to the goods/services concerned.

Bearing in mind that the earlier mark is included in its entirety as the first verbal element of the contested sign, that it will be perceived as a separately identifiable element due to its meaning, and that it is furthermore of a normal degree of distinctiveness for the goods found to be identical, it is concluded that the relevant public could believe that the goods in question come from the same undertaking or economically linked undertakings.

Considering all the above, especially the identity of the goods and the normal degree of attention of the public, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Benelux trade mark registration.

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 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

Adriana VAN ROODEN

Benjamin Erik WINSNER

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.