OPPOSITION No B 2 740 309
Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)
a g a i n s t
Sartoria Ismara Sas, Via XXIV Maggio 39/b, 20094 Corsico, Italy (applicant), represented by Massimiliano Brio, Viale Papiniano 22/b, 20123 Milano, Italy (professional representative).
On 09/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 740 309 is partially upheld, namely for the following contested goods:
Class 25: Clothing; headgear; footwear; hats; roll necks [clothing]; casualwear; loungewear; ladies’ clothing; work clothes; girls’ clothing; menswear; clothing made of fur; formalwear; formal evening wear; cashmere clothing; woolen clothing; leather clothing; silk clothing; knitted underwear; boys’ clothing; dresses; suits; ball gowns; women’s ceremonial dresses; evening wear; dinner suits; wedding dresses; robes; neckwear; linen clothing; woven clothing; bandanas [neckerchiefs]; Bermuda shorts; nightwear; ladies’ underwear; underwear; blazers; bomber jackets; boxer shorts; braces for clothing [suspenders]; suspender belts for men; stockings; socks; button down shirts; turtleneck shirts; open-necked shirts; shirts; blouses; vest tops; tank tops; waist belts; cardigans; cowls [clothing]; hoods [clothing]; heavy coats; coats; tights; collars; evening suits; tutus; three piece suits [clothing]; bathing suits; shoulder wraps [clothing]; sundresses; cravats; turtlenecks; kerchiefs [clothing]; pocket squares; silk scarves; sweat shirts; jacket liners; foulards [clothing articles]; scarfs; knee-high stockings; jackets [clothing]; overcoats; gilets; blousons; skirts; overalls; aprons [clothing]; gloves [clothing]; raincoats; chefs’ whites; denims [clothing]; weatherproof clothing; fleeces; knitwear [clothing]; men’s underwear; denim jeans; jerseys [clothing]; leggings [trousers]; lingerie; kilts; maillots [hosiery]; hosiery; sweaters; muffs [clothing]; mantles; cloaks; miniskirts; pants; footless tights; trousers shorts; shorts; nappy pants [clothing]; trousers; bowties; coverups; ear muffs [clothing]; parkas; pelisses; thongs; shirt yokes; pajamas (Am.); polo shirts; cuffs; ponchos; sunsuits; pullovers; stocking suspenders; bandeaux [clothing]; brassieres; salopettes; neck scarfs [mufflers]; handwarmers [clothing]; shawls; outerclothing; petticoats; slips [undergarments]; dust coats; skirt suits; tee-shirts; bathwraps; togas; albs; tops [clothing]; trench coats; tunics; combinations [clothing]; jumper suits; twin sets; uniforms; veils [clothing]; lounging robes; nighties; shift dresses; athletic uniforms; ladies’ dresses.
2. European Union trade mark application No 15 229 909 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 229 909, namely against all the goods in Classes 25 and 26. The opposition is based on European Union trade mark registration No 14 948 707. 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.
- The goods
The goods on which the opposition is based are the following:
Class 14: Jewellery; ornaments [jewellery, jewelry (Am.)]; rings (jewellery); necklaces; bracelets; earrings; jewel pendants; key rings [trinkets or fobs]; jewel cases; chronoscopes.
Class 18: Goods of leather, namely bags, suitcases, handbags, backpacks, briefcases, document cases, vanity cases, not fitted, credit card holders, business card holders, pouches, pocket wallets, credit card cases, wallets, travelling sets, key cases, fitted suitcase tags, straps (belts), all the aforesaid goods of leather; goods of imitations of leather, namely bags, suitcases, handbags, backpacks, briefcases, document cases, vanity cases, not fitted, credit card holders, business card holders, pouches, pocket wallets, credit card cases, wallets, travelling sets, key cases, fitted suitcase tags, straps (belts), all the aforesaid goods of imitations of leather; handbags, casual bags; purses, change purses.
Class 25: Clothing, footwear, headgear; outer-clothing, suits, costumes, blazers, blouses, tunics, shirts, tops, denim pants, trousers, gowns, skirts, pullovers, sweat shirts, cardigans, waistcoats, combinations [clothing], jackets and coats; underclothing and underwear for day and night wear, girdles, leotards, bustiers, brassieres, corsets, bodices, camisoles, tops, corselets, negligees, underpants, slips, jazz pants, hipster pants, thongs, shorts knickers, boxer shorts, suspender belts, stocking suspenders, garters, undershirts, bed wear and night wear, tights, stockings, socks, tank tops, nighties, sleepsuits, robes, petticoats, articles of clothing for swimwear, swimming costumes, bikinis; footwear insoles; headscarves, scarves.
Class 26: Decorative articles for the hair.
The contested goods are the following:
Class 25: Clothing; headgear; footwear; hats; roll necks [clothing]; casualwear; loungewear; ladies’ clothing; work clothes; girls’ clothing; menswear; clothing made of fur; formalwear; formal evening wear; cashmere clothing; woolen clothing; leather clothing; silk clothing; knitted underwear; boys’ clothing; dresses; suits; ball gowns; women’s ceremonial dresses; evening wear; dinner suits; wedding dresses; robes; neckwear; linen clothing; woven clothing; bandanas [neckerchiefs]; Bermuda shorts; nightwear; ladies’ underwear; underwear; blazers; bomber jackets; boxer shorts; braces for clothing [suspenders]; suspender belts for men; stockings; socks; button down shirts; turtleneck shirts; open-necked shirts; shirts; blouses; vest tops; tank tops; waist belts; cardigans; cowls [clothing]; hoods [clothing]; heavy coats; coats; tights; collars; evening suits; tutus; three piece suits [clothing]; bathing suits; shoulder wraps [clothing]; sundresses; cravats; turtlenecks; kerchiefs [clothing]; pocket squares; silk scarves; sweat shirts; jacket liners; foulards [clothing articles]; scarfs; knee-high stockings; jackets [clothing]; overcoats; gilets; blousons; skirts; overalls; aprons [clothing]; gloves [clothing]; raincoats; chefs’ whites; denims [clothing]; weatherproof clothing; fleeces; knitwear [clothing]; men’s underwear; denim jeans; jerseys [clothing]; leggings [trousers]; lingerie; kilts; maillots [hosiery]; hosiery; sweaters; muffs [clothing]; mantles; cloaks; miniskirts; pants; footless tights; trousers shorts; shorts; nappy pants [clothing]; trousers; bowties; coverups; ear muffs [clothing]; parkas; pelisses; thongs; shirt yokes; pajamas (Am.); polo shirts; cuffs; ponchos; sunsuits; pullovers; stocking suspenders; bandeaux [clothing]; brassieres; salopettes; neck scarfs [mufflers]; handwarmers [clothing]; shawls; outerclothing; petticoats; slips [undergarments]; dust coats; skirt suits; tee-shirts; bathwraps; togas; albs; tops [clothing]; trench coats; tunics; combinations [clothing]; jumper suits; twin sets; uniforms; veils [clothing]; lounging robes; nighties; shift dresses; athletic uniforms; ladies’ dresses.
Class 26: Snap fasteners; ornamental novelty buttons; buttons for clothing; shirt buttons; snap buttons for clothing; novelty buttons [badges] for wear; blazer buttons of precious metals; lapel buttons of precious metals; rivet buttons.
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 clothing; roll necks [clothing]; casualwear; loungewear; ladies’ clothing; work clothes; girls’ clothing; menswear; clothing made of fur; formalwear; formal evening wear; cashmere clothing; woolen clothing; leather clothing; silk clothing; knitted underwear; boys’ clothing; dresses; suits; ball gowns; women’s ceremonial dresses; evening wear; dinner suits; wedding dresses; robes; neckwear; linen clothing; woven clothing; bandanas [neckerchiefs]; Bermuda shorts; nightwear; ladies’ underwear; underwear; blazers; bomber jackets; boxer shorts; braces for clothing [suspenders]; suspender belts for men; stockings; socks; button down shirts; turtleneck shirts; open-necked shirts; shirts; blouses; vest tops; tank tops; waist belts; cardigans; cowls [clothing]; hoods [clothing]; heavy coats; coats; tights; collars; evening suits; tutus; three piece suits [clothing]; bathing suits; shoulder wraps [clothing]; sundresses; cravats; turtlenecks; kerchiefs [clothing]; pocket squares; silk scarves; sweat shirts; jacket liners; foulards [clothing articles]; scarfs; knee-high stockings; jackets [clothing]; overcoats; gilets; blousons; skirts; overalls; aprons [clothing]; gloves [clothing]; raincoats; chefs’ whites; denims [clothing]; weatherproof clothing; fleeces; knitwear [clothing]; men’s underwear; denim jeans; jerseys [clothing]; leggings [trousers]; lingerie; kilts; maillots [hosiery]; hosiery; sweaters; muffs [clothing]; mantles; cloaks; miniskirts; pants; footless tights; trousers shorts; shorts; nappy pants [clothing]; trousers; bowties; coverups; ear muffs [clothing]; parkas; pelisses; thongs; shirt yokes; pajamas (Am.); polo shirts; cuffs; ponchos; sunsuits; pullovers; stocking suspenders; bandeaux [clothing]; brassieres; salopettes; neck scarfs [mufflers]; handwarmers [clothing]; shawls; outerclothing; petticoats; slips [undergarments]; dust coats; skirt suits; tee-shirts; bathwraps; togas; albs; tops [clothing]; trench coats; tunics; combinations [clothing]; jumper suits; twin sets; uniforms; veils [clothing]; lounging robes; nighties; shift dresses; athletic uniforms; ladies’ dresses are either identically contained in both lists of goods or included in the broader category of the opponent’s clothing and, therefore, they are identical.
The contested headgear is identically contained in both lists of goods.
The contested hats are included in the broader category of the opponent’s headgear and, therefore, they are identical.
The contested footwear is identically contained in both lists of goods.
Contested goods in Class 26
The contested snap fasteners; ornamental novelty buttons; buttons for clothing; shirt buttons; snap buttons for clothing; novelty buttons [badges] for wear; blazer buttons of precious metals; lapel buttons of precious metals; rivet buttons are mainly dressmaker’s articles, normally available in haberdasheries, that serve as parts and components, as well as fittings, for clothes or other textile goods or are used in making clothes, headgear and footwear. However, the mere fact that they are used for manufacturing final products that belong to Classes 18 and 25 is not enough to render them similar to the opponent’s goods in those classes. They usually target undertakings that manufacture the end product and not the general public, and they do not usually have the same distribution channels. They also differ from the opponent’s goods in Class 14, since jewellery refers to personal ornaments containing precious metals or stones that are sold in jewellers, and from the opponent’s goods in Class 26, as decorative articles for hair are toiletry articles that have a different purpose from and are not complementary to or in competition with the contested goods. Moreover, these goods are usually sold in cosmetics shops or other specialised shops. Therefore, these contested goods are dissimilar to all the opponent’s goods in Classes 14, 18, 25 and 26.
- 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 average.
- The signs
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ISMARA |
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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 figurative mark consisting of the verbal element ‘esmara’ written in standard white lower case letters on a black rectangle. There is no element that could be considered dominant in the mark.
The sign is composed of a distinctive verbal element, which has no meaning for the relevant public, and a less distinctive figurative element of a purely decorative nature.
The contested sign is a word mark consisting of the word ‘ISMARA’, which has no meaning for the relevant public and is considered distinctive for the relevant goods. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters. The contested mark has no element that could be considered more dominant than any other.
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 string of letters ‘*SMARA’ and in their length. However, they differ in the first letters of their verbal elements, ‘E’ and ‘I’, and in the additional, less distinctive, figurative element and the slightly stylised typeface of the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the pronunciation of the letters ‘*SMARA’. They differ in the sounds of their first letters, ‘E’ and ‘I’, which may, however, produce relatively similar sounds for part of the relevant public.
Therefore, the signs are aurally similar to a high degree.
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.
- 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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the contested goods are partly identical to the opponent’s goods and partly dissimilar. They target the public at large. The degree of attention in relation to the goods in question is average. The marks are visually similar to an average degree and aurally highly similar; the conceptual aspect does not influence the outcome of the assessment of the marks’ similarity.
Account is also 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 the above and the fact that the main difference between the signs lies in only one letter in each mark, it is highly conceivable that the relevant consumer will perceive that the identical goods marked with the signs in question come from the same undertaking or from economically linked undertakings.
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 mark.
The rest of the contested goods are dissimilar. As similarity of goods 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
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Anna |
Begoña |
Boyana NAYDENOVA |
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.