OPPOSITION No B 2 680 943

S.C. Dante international S.A., 148 Virtutii Road, District 6, Bucharest, Romania (opponent), represented by Ruxandra Raluca Ardeleanu, Str. Baia de Arama nr. 1, bloc B, tronson 3, etaj 6, ap. 117, sector 2, 022204 Bucharest, Romania (professional representative)

a g a i n s t

Magluxury S.r.l., Via Consortile SNC, Zona Industriale ASI, 81030 TEVEROLA (CE), Italy (applicant), represented by G.D. di grazia d’alto & C.S.N.C., Isola E1- Centro Direzionale, 80143 Napoli, Italy (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 680 943 is partially upheld, namely for the following contested goods and services:

Class 18:         Cases, of leather or leatherboard; leather cloth; shoulder belts; bags, wallets and other carriers; toiletry bags; cases of imitation leather; key cases made of leather; vanity cases sold empty; cosmetic cases sold empty; shaving bags sold empty; tool pouches, sold empty; keycases; carry-on bags; vanity cases, not fitted; boston bags; casual bags; shoulder bags; wheeled shopping bags; work bags; gym bags; beach bags; sport bags; shopping bags; shopping bags with wheels attached; canvas bags; diplomatic bags; leather bags and wallets; flexible bags for garments; waterproof bags; bags made of imitation leather; knitted bags, not of precious metals; saddlebags; towelling bags; chain mesh purses; courier bags; cosmetic bags sold empty; two-wheeled shopping bags; shopping bags made of skin; textile shopping bags; book bags; nappy bags; charm bags (omamori-ire); shoe bags; tool bags [empty] for motor cycles; roll bags; gentlemen’s handbags; small bags for men; purses; hipsacks; purses made of precious metal; leather purses; multi-purpose purses; cosmetic purses; clutch bags; handbags; small clutch purses; evening handbags; handbags made of imitations leather; handbags made of leather; ladies’ handbags; handbags, purses and wallets; duffel bags; pouches for holding make-up, keys and other personal items; portfolio cases [briefcases]; school book bags; satchels; briefbags; coin holders; holders in the nature of cases for keys; key cases of imitation leather; tie cases; bumbags; belt bags and hip bags; small purses; clutches [purses]; credit card cases [wallets]; credit card holders made of leather; credit card holders made of imitation leather; card cases [notecases]; card wallets [leatherware]; key-cases of leather and skins; briefcases and attache cases; briefcases [leather goods]; folding briefcases; wallets; wallets including card holders; wallets for attachment to belts; wallets of precious metal; wallets, not of precious metal; leather credit card wallets; wrist mounted purses; purses, not of precious metal; coin purses, not of precious metal; net bags for shopping; haversacks; duffel bags; all-purpose athletic bags; attache cases; attache cases made of imitation leather; daypacks; backpacks; driving licence cases; holdalls.

Class 25:         Clothing; hats; casualwear; menswear; clothing made of fur; formal evening wear; rainproof clothing; clothing of imitations of leather; leather clothing; knitted underwear; clothing for gymnastics; leisurewear; clothing for skiing; boys’ clothing; sportswear; gowns; suits; women’s ceremonial dresses; evening wear; dresses made from skins; leisure suits; robes; bathrobes; beach robes; rainwear; bandanas [neckerchiefs]; bermuda shorts; nightwear; ladies’ underwear; babies’ undergarments; underwear; bikinis; blazers; boas; boas [necklets]; leotards; snap crotch shirts for infants and toddlers; boleros; boxer shorts; stocking suspenders; suspender belts for men; corsets; caftans; stockings; men’s socks; socks; slipper socks; woollen socks; socks and stockings; breeches; swimming trunks; chemisettes; shirts; button down shirts; collared shirts; dress shirts; shirts for suits; casual shirts; bodices [lingerie]; tank tops; vest tops; capes; coats; leather jackets; fur coats and jackets; coats of denim; cardigans; sports jackets; waist belts; belts [clothing]; belts made from imitation leather; leather belts [clothing]; chemises; evening suits; tutus; pantsuits; swimming costumes; bathing costumes for women; bathing suits for men; beachwear; neckties; knickers; turtlenecks; cummerbunds; kerchiefs [clothing]; sweat shirts; silk scarves; neckerchiefs; scarves; jackets [clothing]; dinner jackets; smoking jackets; men’s and women’s jackets, coats, trousers, vests; down jackets; rainproof jackets; denim jackets; knit jackets; long jackets; bushjackets; suede jackets; sleeveless jackets; gilets; leather waistcoats; blousons; skirts; culotte skirts; gloves [clothing]; knitted gloves; gloves including those made of skin, hide or fur; mackintoshes; ready-to-wear clothing; fleeces; denim jeans; hosiery; undershirts; sweaters; mantles; cloaks; boxer shorts; negligees; camiknickers; waistcoats; trousers shorts; shorts; trunks; trousers; dress pants; trousers of leather; bowties; beach wraps; parkas; bathing suit cover-ups; pyjamas; polo shirts; pullovers; shawls; shawls and headscarves; topcoats; outerclothing for girls; outerclothing for men; outerclothing; shirt fronts; shoulder scarves; short-sleeved or long-sleeved t-shirts; skirt suits; tee-shirts; bathwraps; trench coats; twin sets; leather suits; lounging robes; shift dresses; berets; rain hats; sun hats; beach hats; woolly hats; leather headwear; flat caps; bonnets; visors; footwear; footwear; pumps [footwear]; wooden shoes; footwear [excluding orthopedic footwear]; non-slipping devices for footwear; footwear for men; inner socks for footwear; desert boots; insoles for footwear; insoles for footwear; walking shoes; riding shoes; wooden shoes; welts for footwear; footwear uppers; children’s footwear; infants’ footwear; fittings of metal for footwear; footwear for women; work shoes; climbing footwear; training shoes; golf footwear; japanese split-toed work footwear (jikatabi); tips for footwear; tips for footwear; beach shoes; footwear made of vinyl; heelpieces for footwear; leisure shoes; footwear not for sports; footwear for women; japanese footwear of rice straw (waraji); dress shoes; shoe soles; boots; mules; slipper socks; leather slippers; bath slippers; women’s foldable slippers.

Class 35:         Commercial administration of the licensing of the goods and services of others; Assistance in management of business activities; Business management consulting; Professional business consulting; Direct mail advertising; Demonstration of goods; Distribution of samples for publicity purposes; Commercial or industrial management assistance; Providing business information via a web site; Business information; Consumers (Commercial information and advice for -) [consumer advice shop]; Marketing services; Exhibitions for commercial or advertising purposes; Presentation of goods on communication media, for retail purposes; Sales promotion for others; Advertising; Business management consultancy in relation to franchising.

2.        European Union trade mark application No 14 859 565 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 859 565. The opposition is based on, inter alia, Romanian trade mark registration No 119 313. 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 Romanian trade mark registration No 119 313.

1. The goods and services

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

Class 25:         Clothing, footwear, headgear.

Class 28:         Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 35:         Advertising; business management; business administration; office functions.

The contested goods and services are the following:

Class 18:         Saddlery, whips and animal apparel; Blankets for animals; Collars for animals; Collars for pets; Umbrellas and parasols; Bags for umbrellas; Straps (Leather -); Shoulder straps; Leather for shoes; Leather, unworked or semi-worked; Moleskin [imitation of leather]; Leather thread; Imitation leather; Worked or semi-worked hides and other leather; Leather and imitation leather; Cases, of leather or leatherboard; Boxes made of leather; Leather cloth; Shoulder belts; Luggage, bags, wallets and other carriers; Suitcases; Toiletry bags; Cases of imitation leather; Key cases made of leather; Vanity cases sold empty; Cosmetic cases sold empty; Shaving bags sold empty; Driving licence cases; Tool pouches, sold empty; Keycases; Luggage; Carry-on bags; Travel luggage; Vanity cases, not fitted; Trunks [luggage]; Trunks and travelling bags; Boston bags; Casual bags; Shoulder bags; Slings for carrying infants; Wheeled shopping bags; Flight bags; Work bags; Gym bags; Beach bags; Sport bags; Travel baggage; Travelling handbags; Travelling bags made of imitation leather; Garment bags for travel made of leather; Shoe bags for travel; Weekend bags; Shopping bags; Shopping bags with wheels attached; Canvas bags; Diplomatic bags; Leather bags and wallets; Flexible bags for garments; Waterproof bags; Bags made of imitation leather; Knitted bags, not of precious metals; Saddlebags; Towelling bags; Chain mesh purses; Courier bags; Cosmetic bags sold empty; Two-wheeled shopping bags; Shopping bags made of skin; Textile shopping bags; Book bags; Nappy bags; Charm bags (omamori-ire); Shoe bags; Tool bags [empty] for motor cycles; Roll bags; Carry cots; Gentlemen’s handbags; Small bags for men; Purses; Hipsacks; Purses made of precious metal; Leather purses; Multi-purpose purses; Cosmetic purses; Clutch bags; Handbags; Small clutch purses; Evening handbags; Travelling sets [leatherware]; Handbags made of imitations leather; Handbags made of leather; Ladies’ handbags; Handbags, purses and wallets; Duffel bags; Pouches for holding make-up, keys and other personal items; Portfolio cases [briefcases]; School book bags; Satchels; Briefbags; Straps for luggage; Coin holders; Holders in the nature of cases for keys; Travel cases; Travel garment covers; Commutation-ticket holders; Business card cases; Credit-card holders; Key cases of imitation leather; Tie cases; Carrying cases for documents; Folio cases; Carrying cases; Overnight cases; Carriers for suits, shirts and dresses; Luggage tags [leatherware]; Back frames for carrying children; Suitcase handles; Bumbags; Belt bags and hip bags; Pouch baby carriers; Small purses; Clutches [purses]; Credit card cases [wallets]; Credit card holders made of leather; Credit card holders made of imitation leather; Card cases [notecases]; Music cases; Garment carriers; Card wallets [leatherware]; Key-cases of leather and skins; Briefcases and attache cases; Art portfolios [cases]; Briefcases [leather goods]; Folding briefcases; Label holders for luggage; Wallets; Wallets including card holders; Wallets for attachment to belts; Wallets of precious metal; Wallets, not of precious metal; Leather credit card wallets; Wrist mounted purses; Purses, not of precious metal; Coin purses, not of precious metal; Net bags for shopping; Haversacks; Duffel bags; All-purpose athletic bags; Holdalls; Hat boxes of leather; Travelling sets; Straps for handbags; Shoulder slings for carrying babies; Attache cases; Attache cases made of imitation leather; Travel garment covers; Pullmans; Small suitcases; Leather suitcases; Portmanteaus; Daypacks; Backpacks

Class 25:         Clothing; Hats; Casualwear; Menswear; Clothing made of fur; Formal evening wear; Rainproof clothing; Clothing of imitations of leather; Leather clothing; Knitted underwear; Clothing for gymnastics; Leisurewear; Clothing for skiing; Boys’ clothing; Sportswear; Gowns; Suits; Women’s ceremonial dresses; Evening wear; Dresses made from skins; Leisure suits; Robes; Bathrobes; Beach robes; Rainwear; Bandanas [neckerchiefs]; Bermuda shorts; Nightwear; Ladies’ underwear; Babies’ undergarments; Underwear; Bikinis; Blazers; Boas; Boas [necklets]; Leotards; Snap crotch shirts for infants and toddlers; Boleros; Boxer shorts; Stocking suspenders; Suspender belts for men; Corsets; Caftans; Stockings; Men’s socks; Socks; Slipper socks; Woollen socks; Socks and stockings; Breeches; Swimming trunks; Chemisettes; Shirts; Button down shirts; Collared shirts; Dress shirts; Shirts for suits; Casual shirts; Bodices [lingerie]; Tank tops; Vest tops; Capes; Coats; Leather jackets; Fur coats and jackets; Coats of denim; Cardigans; Sports jackets; Waist belts; Belts [clothing]; Belts made from imitation leather; Leather belts [clothing]; Chemises; Evening suits; Tutus; Pantsuits; Swimming costumes; Bathing costumes for women; Bathing suits for men; Beachwear; Neckties; Knickers; Turtlenecks; Cummerbunds; Kerchiefs [clothing]; Sweat shirts; Silk scarves; Neckerchiefs; Scarves; Jackets [clothing]; Dinner jackets; Smoking jackets; Men’s and women’s jackets, coats, trousers, vests; Down jackets; Rainproof jackets; Denim jackets; Knit jackets; Long jackets; Bushjackets; Suede jackets; Sleeveless jackets; Gilets; Leather waistcoats; Blousons; Skirts; Culotte skirts; Gloves [clothing]; Knitted gloves; Gloves including those made of skin, hide or fur; Mackintoshes; Ready-to-wear clothing; Fleeces; Denim jeans; Hosiery; Undershirts; Sweaters; Mantles; Cloaks; Boxer shorts; Negligees; Camiknickers; Waistcoats; Trousers shorts; Shorts; Trunks; Trousers; Dress pants; Trousers of leather; Bowties; Beach wraps; Parkas; Bathing suit cover-ups; Pyjamas; Polo shirts; Pullovers; Shawls; Shawls and headscarves; Topcoats; Outerclothing for girls; Outerclothing for men; Outerclothing; Shirt fronts; Shoulder scarves; Short-sleeved or long-sleeved t-shirts; Skirt suits; Tee-shirts; Bathwraps; Trench coats; Twin sets; Leather suits; Lounging robes; Shift dresses; Berets; Rain hats; Sun hats; Beach hats; Woolly hats; Leather headwear; Flat caps; Bonnets; Visors; Footwear; Footwear; Pumps [footwear]; Wooden shoes; Footwear [excluding orthopedic footwear]; Non-slipping devices for footwear; Footwear for men; Inner socks for footwear; Desert boots; Insoles for footwear; Insoles for footwear; Walking shoes; Riding shoes; Wooden shoes; Welts for footwear; Footwear uppers; Children’s footwear; Infants’ footwear; Fittings of metal for footwear; Footwear for women; Work shoes; Climbing footwear; Training shoes; Golf footwear; Japanese split-toed work footwear (jikatabi); Tips for footwear; Tips for footwear; Beach shoes; Footwear made of vinyl; Heelpieces for footwear; Leisure shoes; Footwear not for sports; Footwear for women; Japanese footwear of rice straw (waraji); Dress shoes; Shoe soles; Boots; Mules; Slipper socks; Leather slippers; Bath slippers; Women’s foldable slippers.

Class 35:         Commercial administration of the licensing of the goods and services of others; Assistance in management of business activities; Business management consulting; Professional business consulting; Direct mail advertising; Demonstration of goods; Distribution of samples for publicity purposes; Commercial or industrial management assistance; Providing business information via a web site; Business information; Consumers (Commercial information and advice for -) [consumer advice shop]; Marketing services; Exhibitions for commercial or advertising purposes; Presentation of goods on communication media, for retail purposes; Sales promotion for others; Advertising; Business management consultancy in relation to franchising; Retailing and wholesaling (excluding the transport thereof) of clothing, Shoes, Headgear, Panniers, Gloves, Belts, Scarves, Stationery items; These services may be provided through retail outlets, wholesale stores, through mail order catalogues or by means of electronic media, via websites or television shopping programs; The bringing together, for the benefit of others, of a variety of goods, in particular clothing, Shoes, Headgear, Panniers, Gloves, Belts, Scarves, Stationery items.

Earlier Romanian trade mark registration No 119 313 is registered for the entire class headings of Classes 25, 28 and 35 of the Nice Classification. It was filed on 08/03/2012. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 10th edition (2012 version).

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 opponent’s clothing, headgear and footwear are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested cases, of leather or leatherboard; leather cloth; shoulder belts; bags, wallets and other carriers; toiletry bags; cases of imitation leather; key cases made of leather; vanity cases sold empty; cosmetic cases sold empty; shaving bags sold empty; tool pouches, sold empty; keycases; carry-on bags; vanity cases, not fitted; boston bags; casual bags; shoulder bags; wheeled shopping bags; work bags; gym bags; beach bags; sport bags; shopping bags; shopping bags with wheels attached; canvas bags; diplomatic bags; leather bags and wallets; flexible bags for garments; waterproof bags; bags made of imitation leather; knitted bags, not of precious metals; saddlebags; towelling bags; chain mesh purses; courier bags; cosmetic bags sold empty; two-wheeled shopping bags; shopping bags made of skin; textile shopping bags; book bags; nappy bags; charm bags (omamori-ire); shoe bags; tool bags [empty] for motor cycles; roll bags; gentlemen’s handbags; small bags for men; purses; hipsacks; purses made of precious metal; leather purses; multi-purpose purses; cosmetic purses; clutch bags; handbags; small clutch purses; evening handbags; handbags made of imitations leather; handbags made of leather; ladies’ handbags; handbags, purses and wallets; duffel bags; pouches for holding make-up, keys and other personal items; portfolio cases [briefcases]; school book bags; satchels; briefbags; coin holders; holders in the nature of cases for keys; key cases of imitation leather; tie cases; bumbags; belt bags and hip bags; small purses; clutches [purses]; credit card cases [wallets]; credit card holders made of leather; credit card holders made of imitation leather; driving licence cases; card cases [notecases]; holdalls; card wallets [leatherware]; key-cases of leather and skins; briefcases and attache cases; briefcases [leather goods]; folding briefcases; wallets; wallets including card holders; wallets for attachment to belts; wallets of precious metal; wallets, not of precious metal; leather credit card wallets; wrist mounted purses; purses, not of precious metal; coin purses, not of precious metal; net bags for shopping; haversacks; duffel bags; all-purpose athletic bags; attache cases; attache cases made of imitation leather; daypacks; backpacks are all articles made of leather or imitations of leather, of different sizes, with the same purpose, namely carrying small items such as coins, papers and keys. They are related to clothing in Class 25 of the earlier mark. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market related goods made of leather and imitations of leather. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

Trunks are large packing cases or boxes that clasp shut, used as luggage or for storage; umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; whips are instruments used for driving animals; saddlery is equipment for horses, such as saddles and harnesses; and travelling bags are for carrying things when travelling. These goods are considered dissimilar to all of the goods and services in Classes 25, 28 and 35 of the earlier mark. They serve very different purposes (storage, protection from rain/sun, assistance with walking, aid in the control and/or riding of animals versus covering/protecting the human body for all goods in Class 25; practising sports, entertainment and decoration for all goods in Class 28; advertisement, business management and office functions for all goods in Class 35). They do not usually have the same retail outlets, they are not usually made or offered by the same manufacturers and, with respect to the opponent’s services in Class 35, they also differ in nature. Therefore the remaining goods in Class 18 are dissimilar.

Contested goods in Class 25

The contested clothing; clothing of imitations of leather; clothing for gymnastics; suits; bathrobes; bandanas [neckerchiefs]; underwear; boas; boas [necklets]; stocking suspenders; corsets; socks and stockings; breeches; shirts; bodices [lingerie]; coats; belts [clothing]; bathing suits for men; neckties; scarves; vests; skirts; gloves [clothing]; hosiery; sweaters; trousers; parkas; pyjamas; pullovers; shawls; topcoats; outerclothing; shirt fronts; short-sleeved t-shirts; berets; visors; footwear; footwear; wooden shoes; non-slipping devices for footwear; wooden shoes; welts for footwear; footwear uppers; tips for footwear; tips for footwear; beach shoes; heelpieces for footwear; boots; bath slippers; insoles for footwear; hats; berets; visors are identically contained in both lists (including synonyms), since the scope of protection of the earlier mark includes all the terms in the alphabetical list (clothing, footwear, headgear) in Class 25 of the 10th edition of the Nice Classification. Therefore, they are identical.

The contested casualwear; menswear; clothing made of fur; formal evening wear; rainproof clothing; leather clothing; knitted underwear; leisurewear; clothing for skiing; boys’ clothing; sportswear; gowns; women’s ceremonial dresses; evening wear; dresses made from skins; leisure suits; robes; beach robes; rainwear; bermuda shorts; nightwear; ladies’ underwear; babies’ undergarments; bikinis; blazers; leotards; snap crotch shirts for infants and toddlers; boleros; boxer shorts; suspender belts for men; caftans; stockings; men’s socks; socks; slipper socks; woollen socks; swimming trunks; chemisettes; button down shirts; collared shirts; dress shirts; shirts for suits; casual shirts; tank tops; vest tops; capes; leather jackets; fur coats and jackets; coats of denim; cardigans; sports jackets; waist belts; belts made from imitation leather; leather belts [clothing]; chemises; evening suits; tutus; pantsuits; swimming costumes; bathing costumes for women; beachwear; knickers; turtlenecks; cummerbunds; kerchiefs [clothing]; sweat shirts; silk scarves; neckerchiefs; jackets [clothing]; dinner jackets; smoking jackets; men’s and women’s jackets, coats, trousers, down jackets; rainproof jackets; denim jackets; knit jackets; long jackets; bushjackets; suede jackets; sleeveless jackets; gilets; leather waistcoats; blousons; culotte skirts; knitted gloves; gloves including those made of skin, hide or fur; mackintoshes; ready-to-wear clothing; fleeces; denim jeans; undershirts; mantles; cloaks; boxer shorts; negligees; camiknickers; waistcoats; trousers shorts; shorts; trunks; dress pants; trousers of leather; bowties; beach wraps; bathing suit cover-ups; polo shirts; shawls and headscarves; outerclothing for girls; outerclothing for men; shoulder scarves; long-sleeved t-shirts; skirt suits; tee-shirts; bathwraps; trench coats; twin sets; leather suits; lounging robes; shift dresses are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested pumps [footwear]; footwear [excluding orthopedic footwear]; footwear for men; inner socks for footwear; desert boots; walking shoes; riding shoes; children’s footwear; infants’ footwear; footwear for women; work shoes; climbing footwear; training shoes; golf footwear; japanese split-toed work footwear (jikatabi); footwear made of vinyl; leisure shoes; footwear not for sports; footwear for women; japanese footwear of rice straw (waraji); dress shoes; shoe soles; mules; slipper socks; leather slippers; women’s foldable slippers are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested rain hats; sun hats; beach hats; woolly hats; leather headwear; flat caps; bonnets are included in the broad category of the opponent’s headgear. Therefore, they are identical.

Contested services in Class 35

The contested direct mail advertising; marketing services; exhibitions for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; sales promotion for others; advertising; distribution of samples for publicity purposes; demonstration of goods are included in both lists, since the scope of protection of the earlier mark includes all the terms in the alphabetical list (advertising) in Class 35 of the 10th edition of the Nice Classification. Therefore, they are identical.

        

The contested commercial administration of the licensing of the goods and services of others business management consulting; consumers (commercial information and advice for -) [consumer advice shop] since the scope of protection of the earlier mark includes all the terms in the alphabetical list (business administration) in Class 35 of the 10th edition of the Nice Classification. Therefore, they are identical.

The contested commercial or industrial management assistance; business management consultancy in relation to franchising; business information are included, since the scope of protection of the earlier mark includes all the terms in the alphabetical list (business management) in Class 35 of the 10th edition of the Nice Classification. Therefore, they are identical.

The contested assistance in management of business activities; professional business consulting; providing business information via a web site; business management consulting are included in the opponent’s broader category of business management. Therefore, they are identical.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing and wholesaling (excluding the transport thereof) of clothing, shoes, headgear, gloves, belts, scarves; these services may be provided through retail outlets, wholesale stores, through mail order catalogues or by means of electronic media, via websites or television shopping programs are similar to a low degree to the opponent’s clothing, footwear and headgear.

The contested retailing and wholesaling (excluding the transport thereof) of panniers and stationery items; these services may be provided through retail outlets, wholesale stores, through mail order catalogues or by means of electronic media, via websites or television shopping programs and the bringing together, for the benefit of others, of a variety of goods are not similar to the opponent’s goods and services in Classes 25 and 28. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Wholesaling and sale via global computer networks consist of other forms of activities around the actual sale of goods. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

Therefore, the contested retailing and wholesaling (excluding the transport thereof) of panniers and stationery items are dissimilar to the opponent’s goods and services.

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 and services found to be identical or similar to different degrees are directed at the public at large and also at business customers with specific professional knowledge or expertise (e.g. in the case of services in Class 35). The degree of attention is average.

3. The signs

eMAG
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 the word ‘eMAG’. The element ‘eMAG’ as such has no meaning for the relevant public and is, therefore, distinctive.

However, it is reasonable to assume that most, if not all, of the consumers will split it based on the meaning of the elements into ‘e’ (it is, there is, there exists or online availability) and ‘mag’ (sorcerer, magus). (information extracted from dexonline on 07/06/2017 at https://dexonline.ro/definitie/mag).

The contested sign is a figurative trade mark consisting of the word ‘MAG’ in highly stylised letters, above which is a drawing consisting of 16 triangles in a square shape is placed, depicted in a golden yellow colour. The element ‘Mag’ of the contested sign will also be understood as a ‘sorcerer, magus’.

Visually, the signs coincide in the letters ‘MAG’, which constitute the totality of the verbal element of contested sign, and differ in the additional letter ‘e’ at the beginning of the earlier trade mark. The signs also differ in the figurative element and the highly stylised letters of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters /MAG/, present identically in both signs. It is also important to consider that this coinciding element constitutes the entire contested mark. The pronunciation differs in the sound of the letter /e/ of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the earlier mark as a whole does not have any meaning for the public in the relevant territory, the element ‘Mag’, included in both signs, will be associated with the meaning explained above, and it is reasonable to assume that most, if not all, of the consumers will split the earlier mark into ‘e’ (it is, there is, there exists or online availability) and ‘mag’ (sorcerer, magus). To that extent, the signs are conceptually similar to an average degree.

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 trade mark has a reputation in connection with all the goods and services for which it is registered, namely clothing, footwear, headgear; games and playthings; gymnastic and sporting articles not included in other classes; decorations for christmas trees; advertising; business management; business administration; office functions. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted, in particular, the following evidence:

• Annex 1: the sales figures of the company have grown exponentially since 2008 – from RON 224 287 031 to RON 685 110 236 in 2012.

• Annex 2: advertising expenditure between 2009 and 2013.

• Annex 3: an assessment of the online shopping and branding market between 2010 and 2013.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use because:

• The information does not identify the goods and services to which the sales figures and advertising expenditure relate.
• The information in Annex 3 is not translated into the language of the proceedings.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods and services. Therefore, a lesser degree of similarity may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17.)

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the contested goods and services are partly identical, partly similar and partly dissimilar. The signs are visually similar to a low degree, aurally highly similar, as they coincide in three letters, ‘MAG’, and conceptually similar to an average degree. They target the public at large, which has an average degree of attention.

Even though there is only a low degree of visual similarity and the visual impression is of more importance in the case of goods in Class 25, this is counteracted by the high aural and average conceptual similarities.

It should be noted that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically-related ones (for a definition of likelihood of association, see 11/11/1997, C-251/95, Sabèl, EU:C:1997:528; and 29/09/1998, C-39/97, Canon, EU:C:1998:442). In the present case, the consumers may think, for instance, that the applicant’s sign refers to a special product line of the opponent’s goods and services, sold in conventional shops or provided online, while the goods sold under the earlier mark are sold or provided via the internet.

Furthermore, account is 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). The difference in one letter between the signs is not sufficient to enable the relevant public to differentiate the signs.

Considering all the above, 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 Romanian trade mark registration No 119 313.

It follows from the above that the contested trade mark must be upheld for the goods and services found to be similar to those of the earlier trade mark.

The rest of the contested goods and services 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 and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 9 239 195, ;

• Romanian trade mark No 119 314, ‘emag’.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The Opposition Division will now examine, in respect of the remaining goods and services, the other ground invoked by the opponent, namely Article 8(5) EUTMR.

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.

1. Reputation of the earlier trade mark

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

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 28/11/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Romania prior to that date.

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.

On 23/08/2016, the opponent submitted the evidence mentioned above, which has already been assessed in section d), Distinctiveness of the earlier mark. Those findings are equally valid here. The Opposition Division finds that, for the reasons explained above, the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected for the remaining goods to the extent that it is based on this ground.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Dorothee SCHLIEPHAKE

Patricia LOPEZ FERNANDEZ DE CORRES

Marianna KONDAS

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.