OPPOSITION No B 2 746 371

Organizzazione Grimaldi S.p.A., CIS Isola 3 n.306/312, 80035 Nola (NA), Italy (opponent), represented by G.D. di Grazia d’Alto & C. S.n.c., Isola E1 – Centro Direzionale, 80143 Napoli, Italy (professional representative)

a g a i n s t

Shenzhen Noble Cosmetics Co., Ltd., 10-10, Huishang Mingyuan, No. 25, Nanqing Road, Luohu District, Shenzhen City, People’s Republic of China (holder), represented by GLP S.r.l., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 746 371 is upheld for all the contested goods.

2.        International registration No 1 271 590 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 271 590. The opposition is based on, inter alia, Italian trade mark registrations No 1 256 830 and No 1 546 413. 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 earlier Italian trade mark registrations No 1 256 830 and No 1 546 413.

1. The goods

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

1. Earlier Italian trade mark registration No 1 256 830

It should be noted that the opponent indicated in the notice of opposition that the opposition was based on all the goods for which the above earlier right is registered but listed only some of those goods, namely the goods in Class 14, instead of all the goods in the attached extract from the Italian Patent and Trademark Office, namely goods in Classes 9 and 14. To overcome the contradictory information contained in the notice of opposition, it is assumed that the opposition is based on all the goods and services for which the earlier right is registered, as follows:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

2. Earlier Italian trade mark registration No 1 546 413

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 14: Precious metals, unwrought or semi-wrought; boxes of precious metal; jewellery made from silver; jewellery; ornaments [jewellery]; jades; jade carving jewelry; rings [jewellery]; chains [jewellery]; wristwatches.

Class 18: School satchels; handbags; wallets; travelling trunks; leather, unworked or semi-worked; trunks [luggage]; fur; umbrellas; leather mat; leather straps.

Class 25: Clothing; layettes [clothing]; bathing suits; wedding cloth; shoes; hats; hosiery; gloves [clothing]; neckties; strap [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 14

Jewellery is identically contained in both lists of goods.

The contested jewellery made from silver; ornaments [jewellery]; jade carving jewelry; rings [jewellery] and chains [jewellery] are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

The contested precious metals, unwrought or semi-wrought are included in the broad category of the opponent’s precious metals. Therefore, they are identical.

The contested jades are included in the broad category of the opponent’s precious stones. Therefore, they are identical.

The contested wristwatches are included in the broad category of the opponent’s horological and chronometric instruments. Therefore, they are identical.

The opponent’s jewellery and the contested boxes of precious metal may have the same producers and distribution channels, such as goldsmiths, jewellers and jewellery stores. They also target the same relevant public, namely those who buy jewellery, and they can also be complementary, that is, articles of jewellery can be complementary to jewellery boxes (of any material). Therefore, these goods are considered similar.

Contested goods in Class 18

Travelling trunks; trunks [luggage]; umbrellas are identically contained in both lists of goods, including synonyms.

The contested leather, unworked or semi-worked is included in the broad category of the opponent’s leather. Therefore, they are identical.

The contested fur is included in the broad category of the opponent’s animal skins, as skin is the natural external covering or integument of an animal removed from the body, especially one which is dressed or tanned (with or without the fur) and used as a material for clothing or other items (information extracted from Oxford English Dictionary on 29/06/2017 at http://www.oed.com/view/Entry/
180922?rskey=LMBQQw&result=1#eid). Therefore, these goods are identical.

The contested school satchels and handbags are similar to the opponent’s trunks and travelling bags. These goods have the same purpose, that of carrying items. They may also have the same producers and distribution channels.

When comparing the opponent’s goods made of these materials [leather and imitations of leather], and not included in other classes to the contested wallets, the nature of these products can be considered the same and their purpose may also be the same in the very broadest sense, in that they are used for carrying small objects and money. However, in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they coincide in other criteria. Therefore, these goods are considered similar to a low degree.

Furthermore, the opponent’s goods made of these materials [leather and imitations of leather] and not included in other classes have the same nature as the contested leather straps, and their purpose may also be the same, as they can be used as parts of clothing or baggage and/or as fasteners to attach or bind items. However, in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they coincide in other criteria. Therefore, these goods are considered similar to a low degree.

Likewise, the opponent’s goods made of these materials [leather and imitations of leather] and not included in other classes have the same nature as the contested leather mats, and their purpose may also be the same in the very broadest sense, in that they are used as mats. However, in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they coincide in other criteria. Therefore, these goods are considered similar to a low degree.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested layettes [clothing]; bathing suits; wedding cloth; hosiery; gloves [clothing]; neckties; strap [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

The contested hats are included in the broad category of the opponent’s headgear. 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, some of the goods found to be identical or similar, such as leather, animal skins and hides and fur, are directed primarily at traders and manufacturers. The other goods found to be identical or similar are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Earlier trade mark (1) No 1 256 830: CANNELLA Earlier trade mark (2) No 1 546 413:
Earlier trade marks	Contested sign

The relevant territory is Italy.

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).

Although earlier trade mark (1) is a word mark and earlier trade mark (2) is a figurative mark, both marks consist of the single word element ‘CANNELLA’, which means ‘cinnamon’ in Italian. Cinnamon is the inner bark of an East Indian tree, dried in the sun in rolls or ‘quills’ and used as a spice. It has a characteristic yellowish-brown colour, is brittle, fragrant and aromatic, and acts as a carminative and restorative. The word ‘CANNELLA’ can also refer to the typical colour of cinnamon. In addition, it has the rather archaic meaning of ‘tap’ (information extracted from Collins Italian-English Dictionary on 29/06/2017 at https://www.collinsdictionary.com/dictionary/italian-english/cannella). This element, which constitutes the earlier marks at issue, is not descriptive, allusive or otherwise weak for the relevant goods; therefore, it is distinctive.

The contested figurative mark, ‘LaCannelle’, comprises two clearly recognisable components starting with upper case letters. While it may be true that word marks must not be dissected based on the presence of a combination of cases, since the use of lower and upper case letters is irrelevant, such a dissection is permissible in the present case, where the contested mark is a figurative mark, and the form and type of the fonts used in its word elements are the result of a conscious design.

The first component of the word element of the mark, ‘La’, is easily recognisable for the relevant public, as it is the feminine definite article in Italian. Even though it is at the beginning of the contested mark, it will have only a limited impact on the relevant consumers, as it is frequently and generally used before nouns. Therefore, this component of the sign refers to and is subordinate to the following word. The second clearly detectable component, ‘Cannelle’, is a French word meaning ‘cinnamon’. The word ‘cannelle’ will be associated immediately by the relevant public with ‘cinnamon’, the ‘colour (of) cinnamon’ or ‘tap’, due to its high degree of similarity to the Italian word ‘cannella’, which has no meaning in relation to the relevant goods and is therefore distinctive.

Visually, earlier trade mark (1), which is a word mark, and the contested figurative sign coincide in the letters ‘CANNELL’. However, the marks differ in the first two letters of the contested mark, ‘LA’, which have no counterparts in the earlier mark but which play a secondary role in the overall impression of the contested sign. These marks also differ in their last letters, ‘A’ in the earlier marks and ‘E’ in the contested sign.

Earlier trade mark (2) is a figurative mark consisting entirely of upper case letters, while the contested sign contains two upper case letters, ‘L’ and ‘C’, with the other letters in lower case. Aside from this, as earlier trade mark (2) does not have any additional graphic elements, the marks coincide and differ in the same elements as the word marks compared above.

Therefore, the signs are visually similar to a higher than average degree.

Aurally, the pronunciation of the signs coincides in the ‘CANNELL’, present identically in both signs. The pronunciation differs in the syllable ‘LA’ at the beginning of the contested sign, which has no counterpart in the earlier signs, and in the sound of the last letters, ‛A’ versus ‘E’, of the signs under comparison.

Bearing in mind that the beginning of the contested mark, ‘La’, is frequently used before nouns and is secondary in the overall impression of the contested sign, the degree of aural similarity is higher than average.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The earlier marks will be perceived as a clear reference to ‘cinnamon’, ‘cinnamon colour’ or ‘tap’, and the same meaning will be attributed to the contested sign, preceded by the definite article (‘the cinnamon’, ‘the colour (of) cinnamon’ or ‘the tap’). Therefore, 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 marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

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 as a whole have 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 marks 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 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).

The earlier marks have an average degree of distinctiveness, and the degree of attention of the relevant public varies from average to high.

The signs are visually and aurally similar to a higher than average degree, and they are highly similar from a conceptual point of view. As stated above, the different beginning of the contested mark, ‘La’, has only limited impact on the relevant consumers, because it is the definite article in the relevant language. The consumers are likely to focus on the distinctive elements, ‘Cannelle’ and ‘Cannella’, of the signs at issue, which are two almost identical word elements conveying the same meaning to the relevant public.

Regardless of their degree of attention, and even if the consumers are capable of detecting certain differences between the two conflicting signs, the likelihood that they might associate the signs with each other is real. This is also true regarding the goods that are similar only to a low degree.

Considering all the above, there is a likelihood of confusion on the part of the relevant public.

As earlier Italian trade mark registrations No 1 256 830 and No 1 546 413 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Alexandra APOSTOLAKIS

Martin EBERL

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.