OPPOSITION No B 2 799 859

Carolina Herrera Ltd, 501 Seventh Avenue, 17th Floor, New York, New York 10018, United States (of America) (opponent), represented by Curell Sunol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

High Class Distribution SRL, Via Marche, 1, 20090 Pieve Emanuele (MI), Italy (applicant), represented by Dott. Franco Cicogna & C. SRL, Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 799 859 is partially upheld, namely for the following contested goods:

Class 18: Bags; handbags; valises; backpacks; wallets; purses; satchels; trunks [luggage]; parasols; umbrellas; wallets for attachment to belts; keycases; key-cases of leather and skins; wallets including card holders; leather wallets; handbags, purses and wallets; wallets of precious metal; leather bags and wallets; card wallets [leatherware]; wallets, not of precious metal; credit card cases [wallets]; leather credit card wallets; portfolio cases [briefcases]; attache cases; briefcases and attache cases; attache cases made of leather; attache cases made of imitation leather; key bags; small bags for men; gentlemen’s handbags; leather and imitations of leather; curried skins; imitation leather; leather purses; studs of leather; saddlery of leather; leather cloth; leather for furniture; boxes made of leather; handbags made of leather; leather suitcases; handbags made of imitations leather; straps made of imitation leather; bags made of imitation leather; travelling bags made of imitation leather; cases of imitation leather; leather thread; girths of leather; leather laces; hat boxes of leather; leather straps; shoulder belts [straps] of leather; valves of leather; leather for shoes; leather for harnesses; leather, unworked or semi-worked; boxes of leather or leatherboard; rainproof parasols; beach umbrellas [beach parasols]; patio umbrellas; umbrellas and parasols; harnesses; bits for animals [harness]; horse bridles; reins [harness]; traces [harness]; harness straps; harness fittings; saddlery.

Class 25: Shirts; blouses; skirts; skirt suits; jackets [clothing]; trousers; trousers shorts; jerseys [clothing]; undershirts; stockings; vest tops; corsets; pants; brassieres; hats; cravats; raincoats; overcoats; coats; bathing suits; ski trousers; waist belts; pelisses; collar protectors; gloves [clothing]; robes; clothing; menswear; ladies’ clothing; girls’ clothing; children’s wear; dresses made from skins; union suits; pajamas (Am.); pajama bottoms; baby doll pyjamas; stocking suspenders; sock suspenders; slips [undergarments]; girdles; scarfs; shawls and headscarves; neckerchiefs; foulards [clothing articles]; playsuits [clothing]; sportswear; jackets being sports clothing; rainproof jackets; warm-up jackets; long jackets; reversible jackets; denim jackets; leather jackets; sleeveless jackets; dinner jackets; down jackets; footwear; slippers; leather slippers; bath slippers; women’s foldable slippers; shoes; dress shoes; flat shoes; rainshoes; training shoes; boots; winter boots; ladies’ boots; boots for motorcycling; rain boots; riding shoes; sandals; bath sandals; sandals and beach shoes; pumps [footwear]; belts made out of cloth; cummerbunds; leather belts [clothing]; fabric belts [clothing]; belts [clothing]; belts made from imitation leather; wrap belts for kimonos (datemaki); money belts [clothing].

2. European Union trade mark application No 15 702 947 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 15 702 947 , namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registrations No 4 758 851 ‘CH’ (word mark) and No 11 866 472  (figurative mark). The opponent invoked Article 8(1)(b) and 8(5) 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 4 758 851.

1. The goods

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

Class 3:         Perfumery products.

Class 18:         Leather and imitations of leather, bags, handbags, travelling bags, wallets, purses, suitcases, umbrellas; goods made from leather and imitations of leather not included in other classes.

Class 25:         Clothing and ready-made clothing; headgear; shoes of all kinds.

The contested goods are the following:

Class 18:         Bags; handbags; valises; backpacks; wallets; purses; satchels; trunks [luggage]; parasols; umbrellas; walking staffs; wallets for attachment to belts; keycases; key-cases of leather and skins; wallets including card holders; leather wallets; handbags, purses and wallets; wallets of precious metal; leather bags and wallets; card wallets [leatherware]; wallets, not of precious metal; credit card cases [wallets]; leather credit card wallets; portfolio cases [briefcases]; attache cases; briefcases and attache cases; attache cases made of leather; attache cases made of imitation leather; key bags; small bags for men; gentlemen’s handbags; leather and imitations of leather; curried skins; imitation leather; leather purses; studs of leather; saddlery of leather; leather cloth; leather for furniture; boxes made of leather; handbags made of leather; leather suitcases; handbags made of imitations leather; straps made of imitation leather; bags made of imitation leather; travelling bags made of imitation leather; cases of imitation leather; leather thread; girths of leather; leather laces; hat boxes of leather; leather straps; shoulder belts [straps] of leather; valves of leather; leather for shoes; leather for harnesses; leather, unworked or semi-worked; boxes of leather or leatherboard; rainproof parasols; beach umbrellas [beach parasols]; patio umbrellas; umbrellas and parasols; frames for umbrellas or parasols; covers for parasols; harnesses; bits for animals [harness]; horse bridles; reins [harness]; traces [harness]; harness straps; harness fittings; saddlery.

Class 25:         Shirts; blouses; skirts; skirt suits; jackets [clothing]; trousers; trousers shorts; jerseys [clothing]; undershirts; stockings; vest tops; corsets; pants; brassieres; hats; cravats; raincoats; overcoats; coats; bathing suits; ski trousers; waist belts; pelisses; collar protectors; gloves [clothing]; robes; clothing; menswear; ladies’ clothing; girls’ clothing; children’s wear; dresses made from skins; union suits; pajamas (Am.); pajama bottoms; baby doll pyjamas; stocking suspenders; sock suspenders; slips [undergarments]; girdles; scarfs; shawls and headscarves; neckerchiefs; foulards [clothing articles]; playsuits [clothing]; sportswear; jackets being sports clothing; rainproof jackets; warm-up jackets; long jackets; reversible jackets; denim jackets; leather jackets; sleeveless jackets; dinner jackets; down jackets; footwear; slippers; leather slippers; bath slippers; women’s foldable slippers; shoes; dress shoes; flat shoes; rainshoes; training shoes; boots; winter boots; ladies’ boots; boots for motorcycling; rain boots; riding shoes; sandals; bath sandals; sandals and beach shoes; pumps [footwear]; belts made out of cloth; cummerbunds; leather belts [clothing]; fabric belts [clothing]; belts [clothing]; belts made from imitation leather; wrap belts for kimonos (datemaki); money belts [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.

Contested goods in Class 18

The contested bags; handbags (listed twice); wallets (listed twice); purses (listed twice); umbrellas (listed twice); leather and imitations of leather; imitation leather; leather, unworked or semi-worked are identically contained in the list of the opponent’s goods (including synonyms).

The contested wallets for attachment to belts; wallets including card holders; leather wallets (listed twice); wallets of precious metal; card wallets [leatherware]; wallets, not of precious metal; credit card cases [wallets]; leather credit card wallets are included in the broad category of the opponent’s wallets. Therefore, they are identical.

The contested leather purses are included in the broad category of the opponent’s purses. Therefore, they are identical.

The contested rainproof parasols are synonymous with the opponent’s umbrellas. Therefore, they are identical.

The contested satchels; leather bags; small bags for men; gentlemen’s handbags; handbags made of leather; handbags made of imitations leather; bags made of imitation leather; travelling bags made of imitation leather; key bags are included in the broad category of the opponent’s bags. Therefore, they are identical.

The contested leather suitcases are included in the broad category of the opponent’s suitcases. Therefore, they are identical.

The contested curried skins; leather cloth; leather for furniture; leather for shoes; leather for harnesses are included in the broad category of the opponent’s leather and imitations of leather. Therefore, they are identical.

The contested valises; backpacks; trunks [luggage]; cases of imitation leather are highly similar to the opponent’s travelling bags, as they have the same nature and purpose. They can also have the same producers, end users and distribution channels.

The contested portfolio cases [briefcases]; attache cases; briefcases and attache cases; attache cases made of leather; attache cases made of imitation leather are highly similar to the opponent’s suitcases, as they have the same nature and purpose. In addition, they can be produced by the same manufacturers and have the same distribution channels.

The contested keycases and key-cases of leather and skins are containers specially designed for storing keys. Their purpose is similar to that of the opponent’s handbags (storage), and these goods are commonly distributed by the same manufacturer or linked manufacturers and have the same end users. In addition, they can normally be found in the same shops. Consequently, they are similar.

The contested parasols (listed twice), beach umbrellas [beach parasols], patio umbrellas are similar to the opponent’s umbrellas as they have the same purpose and nature. They can also have the same producers, end users and distribution channels.

The contested studs of leather; saddlery of leather; boxes made of leather; straps made of imitation leather; leather thread; girths of leather; leather laces; hat boxes of leather; leather straps; shoulder belts [straps] of leather; valves of leather; boxes of leather or leatherboard; harnesses; bits for animals [harness]; horse bridles; reins [harness]; traces [harness]; harness straps; harness fittings; saddlery have the same nature as the opponent’s goods made from leather and imitations of leather not included in other classes. Their purpose, in the broadest sense, may also be the same, in that they are for carrying, holding or storing various possessions, for use in manufacturing or for use with animals. To that extent, these goods are similar to a low degree. However, in the absence of an express limitation by the opponent to clarify its goods, it cannot be assumed that they coincide in other criteria.

The contested walking staffs are devices used as an aid in walking. The nature of these goods is very different from those of the opponent’s goods in Classes 3, 18 and 25. They serve very different purposes (goods that provide help in walking versus goods used to impart a pleasant smell to one’s body, carry personal articles, serve as raw materials or cover the body). They are not usually sold in the same retail outlets and they are not usually made by the same manufacturers. These goods are considered dissimilar.

The contested frames for umbrellas or parasols and covers for parasols are dissimilar to the opponent’s goods in Class 18. As regards the contested frames for umbrellas or parasols, they are items for manufacturing, which target a different public (manufacturers) and not the end consumers of the finished product, such as for example the opponent’s umbrellas. They do not have the same nature, purpose or method of use, and they are neither complementary nor in competition. The mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity be fulfilled, such as the goods having the same producers or public or being complementary. In the present case, the goods in question are usually produced by different manufacturers and target different publics. Furthermore, the contested covers for parasols may target the manufacturers of the final product (a parasol), but can also be sold separately, as an independent item for the general public. However, it is not sufficient to find a similarity between these contested goods and the opponent’s goods, which do not parasols. Therefore, there is no complementarity between these goods and the opponent’s goods in Class 18; they neither share any other relevant similarity criteria. A fortiori, the contested frames for umbrellas or parasols and covers for parasols are dissimilar to the opponent’s other goods in Class 3, which are perfumery products, and in Class 25, which are clothing, footwear and headgear. The goods have different natures and purposes and target different consumers. They are neither complementary nor in competition.

Contested goods in Class 25

The contested shirts; blouses; skirts; skirt suits; jackets [clothing]; trousers; trousers shorts; jerseys [clothing]; undershirts; stockings; vest tops; corsets; pants; brassieres; cravats; raincoats; overcoats; coats; bathing suits; ski trousers; waist belts; pelisses; collar protectors; gloves [clothing]; robes; clothing; menswear; ladies’ clothing; girls’ clothing; children’s wear; dresses made from skins; union suits; pajamas (Am.); pajama bottoms; baby doll pyjamas; stocking suspenders; sock suspenders; slips [undergarments]; girdles; scarfs; shawls and headscarves; neckerchiefs; foulards [clothing articles]; playsuits [clothing]; sportswear; jackets being sports clothing; rainproof jackets; warm-up jackets; long jackets; reversible jackets; denim jackets; leather jackets; sleeveless jackets; dinner jackets; down jackets; belts made out of cloth; cummerbunds; leather belts [clothing]; fabric belts [clothing]; belts [clothing]; belts made from imitation leather; wrap belts for kimonos (datemaki); money belts [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

The contested footwear, as a broad category, includes the opponent’s shoes of all kinds. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered to be identical to the opponent’s goods.

The contested slippers; leather slippers; bath slippers; women’s foldable slippers; shoes; dress shoes; flat shoes; rainshoes; training shoes; boots; winter boots; ladies’ boots; boots for motorcycling; rain boots; riding shoes; sandals; bath sandals; sandals and beach shoes; pumps [footwear] are included in the broad category of the opponent’s shoes of all kinds. Therefore, they are identical.

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 to varying degrees are directed at the public at large and some of them, such as leather and valves of leather, are also directed at a professional public.

The degree of attention is considered average.

3. The signs

CH
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 earlier mark is a word mark composed of two letters, ‘C’ and ‘H’.

The contested sign is a figurative mark composed of two letters, ‘C’ and ‘H’, written in a particular typeface.

The letters ‘C’ and ‘H’, and their combination, do not have any meaning in relation to the relevant goods and are, therefore, distinctive to an average degree.

As regards the contested sign, it should be noted that, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more important than the latter, because the average consumer will more easily refer to the goods in question by name than by describing the figurative element of the trade mark. The verbal element of the contested mark will have more impact than its particular typeface when assessing the likelihood of confusion between the marks.

Visually, the signs coincide in the verbal element ‘CH’. However, they differ in the stylisation of the contested sign.

Therefore, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛CH’, present identically in both signs. It is probable that the public will pronounce the letter ‘C’ in the contested sign first, due to the larger size of this letter, which will first attract the attention of the reader.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponent, the earlier mark has been extensively used and enjoys 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 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

Some of the goods in the present case are identical or similar to varying degrees. In addition, the signs have significant visual similarities and are aurally identical. Moreover, the commonalities stem from the element ‘CH’, which has a normal degree of distinctiveness, and the public’s degree of attention is average. The difference is confined to the stylisation of the contested sign.

For the reasons set out above, the Opposition Division considers that there are no sufficient factors capable of outweighing the similarity between the signs.

With this in mind, and taking into account the interdependence principle, according to which a lesser degree of similarity between the goods or services can be offset by a greater degree of similarity between the signs (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17), the Opposition Division finds that the similarities between the signs are sufficiently strong to justify a finding of a likelihood of confusion on the part of the public for the identical or similar goods, even for the goods that were found to be similar to a low degree.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, 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 mark enjoyed an enhanced degree of distinctiveness.

The Opposition Division will proceed with the examination of the opposition as regards the remaining, dissimilar, goods, namely walking staffs, frames for umbrellas or parasols, covers for parasols in Class 18.

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 mark

According to the opponent, the earlier trade mark has a reputation in Spain.

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 28/07/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 3:         Perfumery products.

Class 18:         Leather and imitations of leather, bags, handbags, travelling bags, wallets, purses, suitcases, umbrellas; goods made from leather and imitations of leather not included in other classes.

Class 25:         Clothing and ready-made clothing; headgear; shoes of all kinds.

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.

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

On 09/11/2016, the opponent submitted the following evidence:

• Annex 1: an extract from CNN.com, dated 2012, entitled ‘How Carolina Herrera turned being chic into big business’.
• Annex 2: an extract from El Periódico, dated 2007 (in Spanish with an English translation thereof). It is an interview with Carolina Herrera in which the sign ‘CH’ is mentioned in relation to fragrances.
• Annex 3: a document from the National Association for the Defence of the Trade Mark (ANDEMA), dated 2013, in Spanish with an English translation thereof, certifying that the trade marks ‘CAROLINA HERRERA’ and ‘CH’ are deemed to be reputed in Spain.
• Annex 4: a document from ANDEMA, dated 2016, certifying that the trade mark ‘CH’, inter alia, is deemed to have a well-known character and a reputation in Spain.
• Annex 5: four decisions issued by the Spanish Patent and Trade Mark Office (in Spanish with an English translation thereof), dated 2013, 2011, 2009 and 2007, recognising the reputation of, inter alia, the opponent’s trade mark ‘CH’.

On 17/03/2017, the opponent submitted the following evidence:

• Annex 6: several decisions of the Spanish Patent and Trade Mark Office, relating to the reputation of trade marks consisting of, inter alia, the signs ‘CH’, ‘CHHC’ and ‘CH Carolina Herrera’, for goods in Class 18 or Class 25.
• Annex 7: a certificate issued by the National Perfumery and Cosmetics Association (STANPA), which states that the fragrances and cosmetic products of the firm Carolina Herrera enjoy a high degree of recognition, prestige and reputation in the Spanish market and that the trade marks ‘CAROLINA HERRERA’, ‘CH’, ‘212’ and ‘212 VIP’ are well known in the perfumery and cosmetics field.
• Annexes 8 and 9: decisions of the Commercial Court of Alicante, issued in 2011 (in Spanish with English translations of extracts), relating to, inter alia, the trade mark ‘CH’, which is recognised as well known in relation to clothing and accessories in Class 18.
• Annexes 10 and 11: decisions of the Commercial Court of Alicante, issued in 2015 and 2016 (in Spanish with English translations of extracts), relating to, inter alia, the trade marks ‘CH’ and ‘CAROLINA HERRERA’, which are recognised as reputed for the specific field of perfumery.
• Annex 12: an extract from a market study dated October 2012, in which ‘Carolina Herrera’ is ranked among the top five brands in the Spanish market. Moreover, the trade mark ‘CH’ appears as a sub-brand with a lower ranking.
• Annex 13: sales figures for 2010-2013 for the brand ‘Carolina Herrera’ and for the brand ‘CH’ in Spain (unknown source).
• Annex 14: an affidavit by the Legal Director of the opponent’s company regarding sales made under the trade marks ‘CHHC’ and ‘CH Carolina Herrera’ for 2007-2010 in Spain.
• Annex 15: sales figures for 2008-2009 under the mark ‘CH’ (source unknown).
• Annex 16: a ranking of total perfume sales for 2010 (from revistavpc.es), in which CH (Carolina Herrera) is ranked number six in Spain.
• Annex 17: a ranking of sales in Spain, in which Carolina Herrera CH is ranked number eight.
• Annex 18: an extract from the biography of the designer Carolina Herrera from encyclopedia.com; it relates to the launch of the ‘CH’ brand.
• Annex 19: a list of awards won by ‘CH’ perfumes in Spain, 2008-2010.
• Annex 20: press articles with depictions of perfumes bearing the sign ‘CH’ and articles relating to the brand ‘CH’.
• Annex 21: an interview with Carolina Herrera published in Glamour in September 2007, which refers to a fragrance available soon called ‘CH’.
• Annex 22: a map of Spain marked with the locations of Carolina Herrera boutiques.
• Annex 23: sample advertisements in magazines for ‘CH’ perfumes, 2003-2010 (the mark is written in different typefaces).
• Annex 24: sample advertisements in magazines for clothing, goods, bags and jewellery, 2003-2010.
• Annex 25: extracts from Elle Fashion Book Spring-Summer 2010.

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time. The sales figures and market studies suggest that the trade mark has a consolidated position in the market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the Spanish public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to perfumery and clothing, whereas there is little or no reference to the remaining goods. This is clear, for example, from the press cuttings and advertisements, in which only the former are mentioned.

Consequently, the opponent has proved the reputation of the earlier mark for perfumery products and clothing and ready-made clothing.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The Opposition Division considers that, given the disparity between the goods for which reputation has been proven (perfumery and clothing) and the remaining contested goods, no link between the marks can be established. These remaining goods are walking staffs, frames for umbrellas or parasols and covers for parasols, which are goods that cannot be linked with a famous designer who produces clothes and perfumes, and is active in the fashion industry.

Therefore, although the relevant sections of the public for the goods covered by the conflicting marks may overlap, to the extent that the opponent’s goods target the public at large and a professional public that is also targeted by the contested goods, the Opposition Division considers that the markets for the opponent’s goods and the contested goods are not related from the perspective of the public and, as a consequence of the difference between these markets, the Opposition Division does not believe that the relevant public, professional or not, would establish a link between the marks at issue.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them, in relation to the remaining contested goods. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected insofar as it is directed against the remaining contested goods.

The opponent has also based its opposition on the European Union trade mark registration No 11 866 472 for the figurative mark  for perfumery; perfumes in Class 3 and clothing, footwear, headgear in Class 25.

Since this other earlier right invoked by the opponent covers a narrower scope of the goods and, given the evidence of reputation listed above, it would not be considered reputed for more goods than the earlier EUTM registration No 4 758 851, the outcome cannot be different with respect to the contested goods for which the opposition has been rejected. Therefore, there is no likelihood of confusion with respect to those goods under Article 8(1)(b) EUTMR and, for the same reasons stated above, no link between the signs under Article 8(5) EUTMR.

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

José Antonio GARRIDO OTAOLA

Zuzanna STOJKOWICZ

Marianna KONDÁS

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.