OPPOSITION No B 2 650 904

CKL Holdings N.V., Leeuwenstraat 4, 2000 Antwerp, Belgium (opponent)

a g a i n s t

Silverstitch GmbH, Bennigsen-Platz 1, 40474 Düsseldorf, Germany (applicant]), represented by Bötcher Dretzki Erlenhardt, Neumannstraße 10, 40235 Düsseldorf, Germany (professional representative).

On 16/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 650 904 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 004 071. The opposition is based on, inter alia, European Union trade mark registration No 14 743 272. 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 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 14 743 272.

1. The goods and services

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

Class 18:        Articles of leather or imitation of leather and not included in other classes; trunks, suitcases, travelling cases, handbags, purses, wallets; umbrellas; parasols and walking sticks; whips, harness and saddlery.

Class 25:        Clothing; footwear and headgear; swimwear; sportswear and leisurewear.

Class 42:        Technical and professional services in the field of design, graphic arts and technical research in the field of fashion.

The contested goods are the following:

Class 14:        Jewellery; pins being jewelry; bracelets [jewellery, jewelry (Am.)]; wristwatches; brooches [jewelry]; chronographs [watches]; necklaces [jewellery, jewelry (Am.)]; chains [jewelry]; earrings; rings [jewellery, jewelry (Am.)]; key rings [trinkets or fobs]; watches; watch straps; time instruments; gold; silver; jewellery made from silver; gold jewellery.

Class 18:        Trunks and suitcases; imitation leather; attache cases; handbags; bags; shopping bags.

Class 25:        Flat shoes; footwear; leisure shoes; gym suits; pullovers; clothing; headgear; leather clothing; waist belts; leisurewear; casual footwear.

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 14

The contested jewellery; pins being jewelry; bracelets [jewellery, jewelry (Am.)]; wristwatches; brooches [jewelry]; chronographs [watches]; necklaces [jewellery, jewelry (Am.)]; chains [jewelry]; earrings; rings [jewellery, jewelry (Am.)]; key rings [trinkets or fobs]; watches; watch straps; time instruments; gold; silver; jewellery made from silver; gold jewellery are considered dissimilar to the opponent´s goods in Classes 18 and 25. Their nature and main purpose is different. While the applicant´s goods are used for personal adornment or time measurement, the opponent´s goods in Class 18 serve for storage, carrying things, protection from rain/sun, assistance with walking, aid in the control and/or riding of animals, and in Class 25 they serve for covering/protecting the human body. They are not usually made by the same manufacturers, even though some clothing designers nowadays also sell fashion accessories such as jewellery and travel accessories under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.  Moreover, the goods are neither in competition nor complementary. Also, contrary to the opponent´s argument, the fact that they could coincide in the distribution channels/retail outlets and target the public at large is not enough to find similarity. In relation to the opponent´s services in Class 42 technical and professional services in the field of design, graphic arts and technical research in the field of fashion, the contested goods in Class 14 also have different nature, purpose and are not in any way in competition or indispensable for one another, as wrongly stated by the opponent. Also, it is not sufficient for a finding of similarity that the services are focused in the field of fashion and that the applicant´s goods are articles of fashion. Therefore, they are considered dissimilar.  

Contested goods in Class 18

Trunks and suitcases; handbags are identically contained in both lists of goods.

The contested bags include, as broader category, the opponent’s handbags. 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 attache cases; shopping bags are considered similar to the opponent´s handbags, since they have the same nature and purpose as articles used for carrying things. Also they can be made by the same manufacturer and coincide in the distribution channels.

The contested imitation leather is a raw material. The fact that one product is used for manufacturing another (for example, leather for handbags, wallets, clothing, footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw material in Class 18 is intended for use in industry rather than for direct purchase by the final consumer. Therefore it is not similar to the opponent’s goods in Classes 18 and 25 since these goods are sold in different outlets, are of a different nature and serve a different purpose.

The contested imitation leather is also dissimilar to the opponent’s services in Class 42 since these goods and services have a different nature, purpose, they are not provided/manufactured by the same companies and they are neither in competition nor complementary.

Contested goods in Class 25

Clothing; footwear and headgear are identically contained in both lists of goods.

The contested flat shoes; Leisure shoes; casual footwear are included in the broad category of the opponent´s footwear. Therefore they are identical.

The contested gym suits; pullovers; leather clothing; waist belts; leisurewear are included in the broad category of the opponent´s clothing. 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 are directed at the public at large whose level of attention is average.

3. The signs

Julia	JULIA GREY
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to weak elements.

The signs are both word marks, consisting of the word ‘JULIA’, which is the whole earlier mark and the words ‘JULIA GREY’ in the contested sign. As it was stated in the opponents’ observations, in word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are written in upper or lower case letters or in a combination thereof.

The word element ‘JULIA’ present in both marks is a well-known female given name throughout the European Union; therefore it will be perceived as such by the relevant public. Consequently, the contested sign ‘JULIA GREY’ will be perceived as a first name and a last name, and because of the aforementioned the word ‘GREY’ is considered more distinctive than the first element in the sign.

Regarding the distinctive elements of the marks, it should be noted 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, family names generally have a higher degree of distinctiveness.

Visually and aurally, the signs are similar to the extent that they coincide in their first word ‘JULIA’. Irrespective of the different pronunciation rules in different parts of the relevant territory, the signs also coincide in the corresponding sounds of the above letters. On the other hand, they differ in the second verbal element ‘GREY’ of the contested sign, which as stated above is more distinctive.

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made by the previous assertions regarding the word ‘JULIA’, which is the common element of the signs and the less distinctive in the contested sign. Consequently, the public is not likely to make a conceptual link between the two signs, because whereas the earlier right refers to any person named Julia, which because of its popularity can be many, the element ‘GREY’ in the contested sign provides a narrower determination of a person, therefore, there is no reason to assume a link between both signs.

Therefore, the signs are conceptually similar to a low degree.

As the signs have been found similar in at least a low degree, 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 and services 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 signs were found similar to a low degree from a visual, aural and conceptual aspect. Contrary to the arguments of the opponent, the fact that the signs have in common the first name ‘JULIA’, and that this term is located at the beginning of the contested sign, is not sufficient for the relevant public to be confused with regard to the origin of the goods. Admittedly, the beginning of a sign may be more likely to catch the consumer’s attention than the elements that follow. However, that is only a general rule and does not apply in this case (14/10/2003, T-292/01, ‘Bass’, § 50; 06/07/2004, T-117/02, ‘Chufafit’, § 48). This is because, as previously stated, not only is the coinciding element the less distinctive element in the contested sign, but the additional element ‘GREY’, recognized as a surname, has an intrinsic distinctive character and provides a sufficient differentiation from the earlier right, as correctly stated by the applicant.  As a direct consequence, consumers will not focus their attention on the first name, but rather on the surname. This difference is of a particular importance since it puts conceptual distance between the signs and will therefore help consumers to differentiate between the signs.

Considering all the above, there is no likelihood of confusion on the part of the public, even for identical goods. Therefore, the opposition must be rejected.

The opponent has also based the opposition on the Benelux trade mark registration No 975 239 for the word mark ‘JULIA’. Since this mark is identical to the one which has been compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists overall.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benoit VLEMINCQ

Begoña URIARTE VALIENTE

Frédérique SULPICE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.