OPPOSITION DIVISION
OPPOSITION No B 2 798 000
Maje, 24 rue du Mail, 75002 Paris, France (opponent), represented by Sodema
Conseils S.A., 16 rue du Général Foy, 75008 Paris, France (professional
representative)
a g a i n s t
LACE Lingerie Group Holding A/S, Frederiksgade 2, 8000 Aarhus, Denmark
(applicant), represented by Patrade A/S, Fredens Torv 3A, 8000 Aarhus C, Denmark
(professional representative).
On 20/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 798 000 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 714 538 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all goods and services of European Union
trade mark application No 15 714 538 for the figurative mark , namely
against all the goods and services in Classes 25 and 35. The opposition is based on
European Union trade mark registration No 11 579 232 for the word mark ‘MAJE’.
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
Decision on Opposition No B 2 798 000 page: 2 of 8
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.
a) The goods and services
The goods on which the opposition is based are the following:
Class 25: Clothing, in particular lingerie, underwear, shirts, T-shirts, sweatshirts,
blouses, jumpers, trousers, skirts, dresses, Bermuda shorts, shorts,
socks, stockings, tights, belts, neckties, stoles and headscarves, jackets,
coats, anoraks, waterproof coats, parkas; footwear, slippers, boots;
headgear, in particular hats, caps, bonnets and berets.
The contested goods and services are the following:
Class 25: Clothing, including lingerie, swimming costumes, nightwear; suspender
belts; footwear; headgear.
Class 35: Retail services in relation to clothing, including lingerie, swimming
costumes, nightwear, suspender belts, footwear, headgear, including by
webshop.
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
The terms ‘in particular’ in the earlier list of goods and services and ‘including’ in the
contested list of goods and services, indicate that the specific goods and services are
only examples of items included in the category and that protection is not restricted to
them. In other words, these terms introduce a non-exhaustive list of examples
(09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
Additionally, it is to be noted that according to Article 33(7) EUTMR, goods or
services are not regarded as being similar to or dissimilar from each other on the
ground that they appear in the same or different classes under the Nice
Classification.
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, including lingerie, swimming costumes, nightwear are
identical to the earlier clothing, in particular lingerie, underwear, shirts, T-shirts,
sweatshirts, blouses, jumpers, trousers, skirts, dresses, Bermuda shorts, shorts,
socks, stockings, tights, belts, neckties, stoles and headscarves, jackets, coats,
anoraks, waterproof coats, parkas. As explained above, the specific goods listed in
each specification after ‘including’ and ‘in particular’ are merely a non-exhaustive list
of examples.
The contested suspender belts are included in the broad category of the earlier
clothing. These goods are thus identical.
Decision on Opposition No B 2 798 000 page: 3 of 8
The contested headgear is identical to the earlier headgear, in particular hats, caps,
bonnets and berets.
The contested footwear is identically included in the list of earlier goods.
Contested services in Class 35
The contested retail services in relation to clothing, including lingerie, swimming
costumes, nightwear, suspender belts, footwear, headgear, including by webshop are
various services connected with retail sale of goods. The Court has held that the
objective of retail trade is the sale of goods to consumers, which includes, in addition
to the legal sales transaction, all activities carried out by the trader for the purpose of
encouraging the conclusion of such a transaction, and that that activity consists of,
inter alia, in selecting an assortment of goods offered for sale and in offering a variety
of services aimed at inducing the consumer to conclude the abovementioned
transaction with the trader in question rather than with a competitor (07.07.2005,
C-418/02, Praktiker, EU:C:2005:425, § 34).
Retail services concerning the sale of particular goods are similar to a low degree to
these 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.
In the present case the contested retail services in Class 35 are limited to certain
goods, namely clothing, including lingerie, swimming costumes, nightwear,
suspender belts, footwear, headgear all of which are identical to the earlier clothing;
footwear and headgear in Class 25. The contested services are therefore considered
similar to a low degree to the above earlier goods.
b) 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 a low
degree are directed at the public at large. The degree of attention is average.
c) The signs
MAJE
Earlier trade mark Contested sign
The relevant territory is the European Union.
Decision on Opposition No B 2 798 000 page: 4 of 8
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 unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The common element ‘MAJ’ is not meaningful in certain territories, for example in
those countries where the French language is understood. Consequently, the
Opposition Division finds it appropriate to focus the comparison of the signs on the
French-speaking part of the public such as in France, Belgium and Luxembourg.
The earlier mark is a word mark composed of one word, namely ‘MAJE’, which has
no meaning for the relevant public and is thus considered distinctive for the earlier
goods.
The contested mark is a figurative one. It is composed of the word ‘maj’, written in
lower case letters, and followed by ‘:’ (a colon symbol) with the word ‘BIKINI’, written
in much smaller upper case letters below. Both words are written in a simple
typeface, however, the letters ‘M’ and ‘A’ are joined together in a rather unusual way.
The connection between them is in the upper part of the letter ‘M’. The second leg of
the letter ‘M’ and the beginning of the letter ‘A’ appear as one. Also, the lower part of
the letter ‘A’ has a gap in it. The whole contested sign is in a uniform shade of blue.
The mark would be read from left to right and from top to bottom, and thus form the
expression ‘maj: BIKINI’. The applicant argued that another reading of the first
element of the contested sign could be ‘nnaj’, ‘moij’ or ‘nnoij’. However, the
Opposition Division is of the opinion that the most natural way of reading the word is
‘maj’ because these are the letters which are readily perceivable.
The word ‘MAJ’ does not have any meaning for the relevant public. The applicant
suggested that it could be understood as a common female name in particular in the
northern parts of Europe. However, such a finding cannot be upheld for the relevant
French-speaking territories, where ‘MAJ’ does not exist as a name. As that word has
no meaning in connection with the goods and services, it is distinctive.
The ‘:’ symbol would be understood as a colon symbol, a punctuation mark consisting
of two equally sized dots centred on the same vertical line. Since the public does not
normally perceive punctuation marks as an indication of origin, the colon symbol
must be seen as weakly distinctive, at most.
The word ‘BIKINI’ would be understood by the relevant public as a two-piece
swimming costume worn by women. As such, it is directly descriptive and non-
distinctive for part of the contested goods and services, namely clothing and retail
relating to clothing. The distinctive power in relation to the remaining goods and
services, all related to either footwear or headgear, must be seen as weak, at most.
The word ‘BIKINI’ in relation to the contested footwear or headgear may be perceived
as a suggestion that these goods are meant to be worn together with a bikini or – in
relation to the contested retail services – that goods that are being retailed have this
Decision on Opposition No B 2 798 000 page: 5 of 8
purpose. Even though it is not directly descriptive of these goods, it would at least be
perceived by the public as alluding to beachwear in general. Also, the element
‘BIKINI’ must be considered secondary on account of its much smaller size and
position in the contested trade mark.
Within the contested sign the word ‘maj’ is the dominant element as it is clearly the
most eye-catching one.
Visually, the signs coincide in the distinctive element ‘MAJ’, which is the dominant
element of the contested sign. However, they differ in the letter ‘E’ of the earlier mark
and the colon symbol of the contested sign – both of which are located in the same
position, as fourth character, at the end of the distinctive element ‘MAJ’. The colon
symbol is not particularly striking visually. Both signs differ also in stylisation of the
contested sign and use of the word ‘BIKINI’ in the contested sign. However, the
difference in the latter word cannot be overestimated due to its descriptive character
for part of the goods and services and, at most, weak distinctive character for the
remaining goods and services, its secondary position within the contested sign and
the fact that consumers tend to focus on the beginnings of trade marks.
Consequently, the signs are similar visually to an average degree.
Aurally, the pronunciation of the signs coincides in the sounds of the elements
‘MAJE’ and ‘MAJ’ which would be uttered by the relevant public identically in one
syllable as /maʒ/, with the letter ‘E’ of the earlier sign being silent. The colon symbol
of the contested sign would not be pronounced. The word ‘BIKINI’ of the contested
sign would be pronounced in three syllables as /bi.ki.ni/. Considering its descriptive
or, at most, weak distinctive character for the contested goods and services, its
secondary position and the fact that it is located at the end after the distinctive
element, the word ‘BIKINI’ cannot create significant differences between the signs.
There is even a possibility that it will not be pronounced at all.
Therefore, it must be concluded that the signs are aurally similar to a high degree or
identical where ‘BIKINI’ is not pronounced.
Conceptually, although the public in the relevant territory will perceive the meanings
in the contested sign as explained above, the other sign has no meaning in that
territory. Since one of the signs will not be associated with any meaning, the signs
are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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
Decision on Opposition No B 2 798 000 page: 6 of 8
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) 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, a similarity between the marks and
between the goods or services. Accordingly, a greater degree of similarity between
the goods and services 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,
§ 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97,
Canon, EU:C:1998:442, § 17).
In the present case, the earlier mark has an average degree of distinctiveness.
The contested goods are identical and the services are lowly similar to the earlier
goods. The signs are visually similar to an average degree and aurally to a high
degree or even identical. The signs are not conceptually similar for the relevant
public. The relevant public is the public at large displaying an average degree of
attention.
The Opposition Division is of the opinion that the differences between the signs, as
indicated above, are not sufficient to counteract their similarities. In particular, the
signs differ mainly in the word ‘BIKINI which is descriptive or at most weakly
distinctive for the contested goods and services, as set out in section c) above. Even
though the earlier mark is relatively short, it coincides nearly entirely, save for the
letter ‘E’, with the distinctive element ‘MAJ’, which is located at the beginning of the
contested mark. This element is not only visually highly similar but would also be
pronounced in a highly similar way, if not identically, by the relevant public, it is thus
likely to attract most of the consumer’s attention and would be referred to by
consumers while referring to the contested mark.
In this regard, 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 applicant refers to three earlier decisions of the Board of Appeal in cases
R1815/2007-1, R1605/2006-2 and R1560/2007-4 to support its arguments. However,
the Office is not bound by its previous decisions as each case has to be dealt with
separately and with regard to its particularities. This practice has been fully supported
by the General Court, which stated that, according to settled case-law, the legality of
decisions is to be assessed purely with reference to the EUTMR, and not to the
Office’s practice in earlier decisions (judgment of 30/06/2004, T-281/02, ‘Mehr für Ihr
Geld’).
Even though previous decisions of the Office are not binding, their reasoning and
outcome should still be duly considered when deciding upon a particular case. The
previous decision in case R1815/2007-1 referred to by the applicant is not relevant to
Decision on Opposition No B 2 798 000 page: 7 of 8
the present proceedings as, unlike in the case at hand, the Board found conceptual
differences and only limited visual and phonetic similarities. The previous decision in
case R1605/2006-2 is not relevant as both of the marks were verbal, the relevant
territory was Portugal and the Board found clear conceptual meaning of the earlier
trademark as a whole, which is not the case here. Also the previous decision in case
R1560/2007-4 is not relevant for the present proceedings, as the Board found clear
phonetic and conceptual differences between the marks for the Spanish public which,
again, is not the case here.
Consequently, the Opposition Division concludes that there is a likelihood of
confusion on the part of the French-speaking part of the public in the relevant
territory, and, therefore, the opposition is well founded on the basis of the opponent’s
European Union trade mark registration No 11 579 232. As stated above in section c)
of this decision, a likelihood of confusion for only part of the relevant public of the
European Union is sufficient to reject the contested application.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Elena NICOLAS GOMEZ Jakub MROZOWSKI Lucinda CARNEY
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
Decision on Opposition No B 2 798 000 page: 8 of 8
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.