OPPOSITION No B 2 671 587

Denisa Radian, Str. Oltarului nr. 8, ap. 1, sector 2, 020764 Bucuresti, Romania (opponent), represented by Ruxandra Raluca Ardeleanu, Str. Baia de Arama nr. 1, bloc B, tronson 3, etaj 6, ap. 117, sector 2, 022204 Bucuresti, Romania (professional representative)

a g a i n s t

Ekspres Tekstil Sanayi Ve Ticaret Limited Sirketi, Hadimköy Mahallesi Mustafa Inan Caddesi No:20, Arnavutköy, Istanbul, Turkey (holder), represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate Intelectuala S.R.L., str. 11 Iunie, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucuresti, Romania (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 671 587 is partially upheld, namely for the following contested goods and services:

Class 25:        Clothing, including underwear and outerclothing, other than special purpose protective clothing; socks; footwear; headgear.

Class 35:        Advertising, marketing and public relations; organization of exhibitions and trade fairs for commercial or advertising purposes; office functions; secretarial services; arranging newspaper subscriptions for others; compilation of statistics; rental of office machines; systemization of information into computer databases; telephone answering for unavailable subscribers; business management, business administration and business consultancy; accounting; commercial consultancy services; personnel recruitment, personnel placement, employment agencies, import-export agencies; temporary personnel placement services; business appraisals; the bringing together, for the benefit of others, clothing, including underwear and outerclothing, other than special purpose protective clothing, socks, footwear, headgear, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues.

2.        International registration No 1 250 764 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration No 1 250 764 designating the European Union. The opposition is based on, inter alia, Romanian trade mark registrations No 119 651 and No 128 487. 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 Romanian trade mark registrations No 119 651 and No 128 487.

1. The goods and services

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

1. Romanian trade mark registration No 119 651

Class 25:        Clothing, footwear, headgear.

2. Romanian trade mark registration No 128 487

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

The contested goods and services are the following:

Class 25:        Clothing, including underwear and outerclothing, other than special purpose protective clothing; socks; footwear; headgear.

Class 35:        Advertising, marketing and public relations; organization of exhibitions and trade fairs for commercial or advertising purposes; office functions; secretarial services; arranging newspaper subscriptions for others; compilation of statistics; rental of office machines; systemization of information into computer databases; telephone answering for unavailable subscribers; business management, business administration and business consultancy; accounting; commercial consultancy services; personnel recruitment, personnel placement, employment agencies, import-export agencies; temporary personnel placement services; business appraisals; auctioneering; the bringing together, for the benefit of others, clothing, including underwear and outerclothing, other than special purpose protective clothing, socks, footwear, headgear, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues.

Preliminary remarks

Earlier Romanian TM No 119 651 is registered for the entire class heading of Class 25 of the Nice Classification. It was filed on 06/03/2012. 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.

However, earlier Romanian TM No 128 487 was filled on 13/12/2012, that is, after the ‘IP Translator’ judgment, and thus the Office interprets all of the services covered by this trade mark on the basis of their natural and usual meaning (see Table 5 of the Common Communication). Consequently, and contrary to the opponent’s claim, earlier Romanian TM No 128 487 does not cover the alphabetical list of the services in Class 35 in the 10th edition of the Nice Classification.

Furthermore, 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 term ‘including’, used in the holder’s list of goods and services, indicates 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, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 underwear and outerclothing, other than special purpose protective clothing (in this regard, reference is made to the explanation of the meaning of the term ‘including’ given above); footwear; headgear are also contained in the list of goods of earlier Romanian TM No 119 651 and they are, therefore, identical.

The contested socks are included in the broader category of the opponent’s clothing of earlier Romanian TM No 119 651. Therefore, they are identical.

Contested services in Class 35

The contested advertising; office functions; business management; business administration are also contained in the list of services of earlier Romanian TM No 128 487 and they are, therefore, identical.

The contested marketing and public relations consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. These contested services are included in or overlap with the broader category of the opponent’s advertising of earlier Romanian TM No 128 487 and, consequently, they are identical.

The contested business consultancy; accounting; commercial consultancy services; business appraisals are intended to help companies manage their businesses by setting out the strategy and/or direction of the company. These services involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. They are usually rendered by companies specialised in this field, such as business consultancy companies, which gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand market share. These contested services are included in or overlap with the broader category of the opponent’s business management of earlier Romanian TM No 128 487 and, consequently, they are identical.

The contested personnel recruitment, personnel placement, employment agencies, temporary personnel placement services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently to direct activities towards common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies. These contested services are included in or overlap with the broader category of the opponent’s business administration of earlier Romanian TM No 128 487 and, consequently, they are identical.

The contested secretarial services; arranging newspaper subscriptions for others; compilation of statistics; rental of office machines; systemization of information into computer databases; telephone answering for unavailable subscribers are the internal day-to-day operations of an organisation, including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders and support services, such as the rental of office machines and equipment. These contested services are included in or overlap with the broader category of the opponent’s office functions of earlier Romanian TM No 128 487 and, consequently, they are identical.

The contested import-export agencies are related to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. Since they relate to business administration, they can have the same providers, end users and distribution channels as the opponent’s business administration of earlier Romanian TM No 128 487. Therefore, these services are similar.

The contested organization of exhibitions and trade fairs for commercial or advertising purposes have some relevant points in common with the opponent’s advertising of earlier Romanian TM No 128 487. They are both aimed at promoting the sale of a company’s products or services, and may target the same undertakings, namely those seeking help with the promotion of their products or services. Therefore, these services are similar to a low degree.

The contested the bringing together, for the benefit of others, clothing, including underwear and outerclothing, other than special purpose protective clothing, socks, footwear, headgear, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues refers to retail and wholesale services provided by different means. In this regard, it must be noted that retail services as well as wholesale services in general are not similar to any goods that are capable of being sold by retail or wholesale. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different.

However, retail and wholesale services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33). The goods covered by the retail and wholesale services and the specific goods covered by the other mark have to be identical for similarity to be found, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. In the present case, following the comparison of the conflicting goods in Class 25, it is considered that the goods which are the object of the contested retail and wholesale services (i.e. clothing, including underwear and outerclothing, other than special purpose protective clothing, socks, footwear, headgear) are identical to the opponent’s goods in Class 25 of earlier Romanian TM No 119 651.

Consequently, the contested the bringing together, for the benefit of others, clothing, including underwear and outerclothing, other than special purpose protective clothing, socks, footwear, headgear, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues is similar to a low degree to the opponent’s clothing, footwear, headgear of earlier Romanian TM No 119 651. Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, as they are complementary and the services are generally offered through the same distribution channels as the goods. Furthermore, they target the same public.

The contested auctioneering covers services rendered by specialised companies (auction agencies) that mediate the process of buying and selling goods or services offering them up for bidding, taking bids and then selling the item to the highest bidder. This service has nothing in common with the opponent’s goods in Class 25 of earlier Romanian TM No 119 651 nor with the opponent’s services in Class 35 of earlier Romanian TM No 128 487. The goods and services under comparison, besides some of them have different natures (goods versus services), they also differ in their purpose (supporting business versus buying and selling goods or services) and methods of use. Furthermore, they are not provided by the same companies (business consultants versus auction agencies), they target different publics (commercial undertakings versus the general public) and they have different distribution channels. Finally, these goods and services are not in competition with or complementary to each other. Consequently, they are dissimilar.

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 are directed at the public at large. The degree of attention will be average for the goods in Class 25.

However, the services found to be identical or similar to varying degrees are directed at both the public at large and business customers with specific professional knowledge or expertise. Due to the degree of sophistication and cost of some of the services (e.g. advertising; business management; business administration; marketing, business consultancy; import-export agencies), their infrequent purchase and the serious and long-term impact they might have on the purchaser’s business, they are likely to be the subject of a relatively careful purchasing decision; therefore, the degree of attention will vary from average to high for the services in Class 35.

3. The signs

NISSA
Earlier trade marks	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 marks are word marks consisting of one verbal element, ‘NISSA’.

The contested sign is a figurative mark composed of the verbal element ‘Manissa’, depicted in title case, handwritten black letters placed on a white rectangular background with a thin grey border. The stylisation of the verbal element and the rectangular background perform only a decorative function within the sign and so have only a low impact on the assessment of the likelihood of confusion.

From the perception of the relevant public, neither the word ‘NISSA’ nor the word ‘Manissa’ has any meaning. Therefore, both words enjoy a normal degree of distinctiveness for the goods and services in question.

Visually, the signs coincide in the sequence of letters ‘NISSA’, which forms the entirety of the earlier marks. However, the contested sign contains additional letters, ‘MA’, placed before the abovementioned coinciding element, and other decorative elements, as indicated above. Nevertheless, although the contested sign has a different beginning, the fact that two-thirds of this sign is identical to the only element of the earlier marks renders the signs visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛NIS-SA’, present in all of the signs. The pronunciation differs in the syllable ‛MA’ of the contested sign, which has no counterpart in the earlier marks. However, the fact that the number of syllables is different is not sufficient to conclude that there is no phonetic similarity (17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 48). Consequently, the signs are considered aurally similar to an average degree.

Conceptually, none of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 relevant goods and services 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, 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, § 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).

As concluded above, the contested goods and services are partly identical, partly similar to different degrees and partly dissimilar to the opponent’s goods and services. Those of them found to be identical or similar to different degrees target the public at large and business customers with a degree of attention varying from average to high. Furthermore, the earlier marks enjoy a normal degree of inherent distinctiveness for the relevant goods and services.

The signs in dispute are visually and aurally similar to an average degree, as explained in detail above in section c) of this decision. The differences between the signs, as outlined above, are not sufficient to counteract their similarities.

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. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines or to endow a trade mark with a new, fashionable image.

In the present case, even if the relevant public might detect certain visual and aural differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public, even the part with a high degree of attention, will regard the goods and services designated by the conflicting signs as belonging to two ranges of goods or services coming from the same undertaking.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion on the part of the public in the relevant territory and, therefore, the opposition is partly well founded on the basis of the opponent’s Romanian trade mark registrations No 119 651 and No 128 487.

It follows from the above that the contested sign must be rejected for the contested goods and services found to be identical or similar to varying degrees to those of the earlier trade marks. This is the case even for the contested services that were found to be similar to a low degree to the goods and services of the earlier trade marks since, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those goods and services is offset by the average degree of visual and aural similarity between the signs.

As regards those services found to be 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 these earlier marks and directed at these services cannot be successful.

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

1. international trade mark registration No 1 112 904 designating the European Union, for the figurative mark  and for the goods in Class 25;

2. international trade mark registration No 1 160 286 designating the European Union, for the word mark ‘NISSA’ and for the services in Class 35.

However, these earlier marks cover the same goods and services as the earlier marks that have already been compared above. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

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

Vít MAHELKA

Martin MITURA

Ric WASLEY

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.