OPPOSITION No B 2 655 853

Monari GmbH, Jöbkesweg 21, 48599 Gronau, Germany (opponent), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative).

a g a i n s t

Manzaris Avee, Agia Kiriaki Kaloneri, Siatista, Kozani, Greece (holder).

 

On 29/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 655 853 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 246 342. The opposition is based on German trade mark registration No 30 2014 024 214. 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.

1. The goods and services

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

Class 3:        Preparations for body and beauty care; soaps; perfumed soaps; cosmetic soaps; deodorant soaps; room fragrance sprays; oil; hand lotion; liquid hand soap; foaming bath gels; shower gel; perfumery; fragrances of all kinds, especially perfume, eau de parfum, eau de toilette deodorant for men; essential oils; hair lotions; shampoo; hair care preparations; cosmetics; cosmetic skin creams; lotions for cosmetic purposes; lipsticks; nail polish; make-up; shaving; shaving products; dentifrices; cosmetic preparations for baths; shoe polish.

Class 9:        Photographic, cinematographic and optical apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; CDs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; calculating machines; hardware for data processing; computer; computer software; computer programs [saved]; computer programs [downloadable]; computer keyboards; television receivers only; cameras; speakers; notebook [computer]; radios; telephone sets, video recorders; chronographs [time recording devices]; cell phone pockets; mobile phones; voice recorders; slides; projection apparatus and equipment; video projectors; data projectors; LCD panels; projection screens; projection screens; touchscreens [interactive projection]; magnetic card with chip, including credit cards; glasses [optics]; lenses; eyeglass frames; sunglasses; spectacle cases; protective helmets for sports.

Class 11:        Lanterns.

Class 16:        Paper, cardboard [cardboard]; printed matter; magazines; brochures; books; magazine; periodicals; lexicons; reference works; newsletters; journals; calendar; catalogues; flyers; posters; posters; postcards; photographs; stationery; artists' materials; brush; packaging material made of paper or plastic [not included in other classes], in particular bags; shop window signs and window strips of plastic film or paper; kitchen towels; napkins; cosmetic and personal care wipes.

Class 21:        Utensils and containers for household and kitchen [not of precious metal or coated therewith]; combs and sponges [for cosmetic purposes]; brushes [other than for painting]; brush-making materials; articles for cleaning purposes; steel chips; steel wool; unworked or semi-worked glass [except glass used in building]; glassware, porcelain and earthenware not included in other classes; tableware for household; tableware for kitchen; dishes for the household; plate for kitchen; bowls, butter dishes, cookie jars, sugar bowls, not of precious metal; mug for household purposes; cup for kitchen; containers for household; vessels for cooking; jugs; vases for the household; vases for kitchen; cans for household; cans for the kitchen; carafes; glassware of lead crystal glass; drinking glasses; ice bucket; candlesticks for the household; candlesticks for the kitchen; gift articles of ceramic material; gift articles of glass; fragrance diffuser; scent; perfume bottles; scented water bottles; cosmetic appliances; cooler bags; shoe trees; cosmetic utensils; facial sponges for applying make-up; toilet requisits; cosmetic powder compacts; tea cosies, warmer.

Class 24:        Woven fabrics; textile goods, not included in other classes; bed and table covers; bedding; towels; bedspreads; handkerchiefs.

Class 25:        Clothing; footwear; headgear; men’s, women’s and children’s clothing; trousers; jackets; costumes; coats; clothes; blouses; shirts; skirts; T-shirts; jerseys; sweatshirts; bathing suits; bikinis; swimwear; bathrobes; bathing caps; undergarments; underwear; lingerie; corsetry; tights; stockings; socks; belt; towels; gloves; suspenders; scarves; headbands; baby clothes; ties; men’s, women’s and children’s shoes.

Class 28:        Games; toys; playing cards; gymnastic and sporting articles [included in class 28] as well as their parts, particularly sporting goods for the trekking sports, mountain climbing, football, basketball, sports, handball, volleyball, tennis, squash sports, badminton sport, hockey, football, sports, baseball, sports, cycling, horse riding, golf, surfing , sailing, rowing, canoeing, diving, alpine ski racing and cross-country skiing-sport and for snowboarding, ice skating and ice hockey, for fitness training, inline skating, roller skating and skateboarding; ski bags; special bags for storing and transporting sports equipment, in particular bags for skis, snowboards, skateboards, ski boots, roller skates and inline skates as well; protective equipment for athletes, especially elbow and knee pads, hand and ankle protection sleeves, body-worn pads, gloves.

Class 35:        Advertising; business management; business administration; office functions; relating to retail and wholesale trade services goods in the field of fashion and textiles, clothing, footwear and headgear, the fashion clothing and fashion accessories, eyeglasses and sunglasses, bags, travel accessories and travel accessories, luggage goods, watches and jewellery, the body and beauty care, perfumery and cosmetic goods, consumer electronics, paper and stationery, leather and small leather goods, household goods and furnishings and decorative goods, also on the internet; business consultancy; business consultancy; organizational consulting; development business management concepts; development of organizational concepts; organization and conducting of advertising events; marketing; market research; market analysis; publication of publicity texts; updating of advertising material; for advertising purposes distribution of goods; arranging of advertising and mediation; advertising advice; online advertising on a computer network; administration of licenses; franchising, namely business management consultancy; organization of exhibitions and trade fairs for commercial or advertising purposes; organization consultancy services; presentation of companies on the internet; presentation of companies in other media; systemization and compilation of data in computer databases; organization of trade fairs for commercial or advertising purposes; distribution of advertising material; public relations; arranging of contracts, for others, for the buying and selling of goods or the provision of services, especially on networks including the internet; goods and services at an accessible presentation through networks website; sales promotion [Sales Promotion] for others; goods and service presentation for third parties on the internet; arranging of contracts, for others, for the sale of goods, including via the internet, online shop or a teleshopping channel; management of stores; business consultancy for franchising concepts; organizational consultancy for franchising concepts; arranging of commercial transactions for others; arranging contracts for third parties for the provision of services; business advice for distribution systems in the retail trade; providing information about all the aforesaid goods through advertising in magazines, brochures and newspapers; exhibition of goods for advertising purposes; presentation of goods for advertising purposes; business advice regarding distribution systems in the retail sector; compilation of various goods [excluding the transport thereof] for others, for presentation and sales purposes to conveniently view and purchase those goods.

The contested goods are the following:

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.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 partly at the public at large and partly at business customers with specific professional knowledge or expertise (for example, leather and imitations of leather in Class 18).

The degree of attention is considered to be average.

3. The signs

MONARI
Earlier trade mark	Contested sign

The relevant territory is Germany.

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, ‘MONARI’. The word has no meaning for the relevant public.

The contested sign is a figurative mark with the verbal elements ‘MANZARI’ and ‘INTERNATIONAL’ written over two lines below the figurative element of the sign. The figurative element is a stylised figure in black and portrays a woman with a hat and a scarf. It has an average distinctiveness in relation to the relevant goods and services. The verbal element ‘MANZARI’ has no meaning for the relevant public however ‘INTERNATIONAL’ will be understood in its English lexical meaning because it exists as a word in German. This element will therefore be perceived as an indication that the relevant goods are sold internationally (i.e. in more than one country), that the provider of the goods is an international entity (i.e. is present in more than one country), etc. Furthermore, this element will be perceived as merely a vague and general indication of the international character of the goods or their manufacturer and not as an identifier of the commercial origin of the goods. Therefore, this element is non-distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘M*N*ARI’, which are present in the only element of the earlier mark and in the first verbal element of the contested sign. However, they differ in that the second letter of the earlier sign is an ‘O’ whilst in the contested sign this letter is an ‘A’ with the addition of a fourth letter, ‘Z’. It has to be borne in mind that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceive a sign as a whole and does not examine its individual details. The coincidence in a string of letters is not clearly perceived, since the differing letters appear at the initial and middle parts of the verbal elements ‘MONARI’ / ‘MANZARI’ right after their first coinciding letter and hence the coinciding letters cannot be identified as independent elements in the marks. The contested sign also consists of the verbal element ‘INTERNATIONAL’ which however is of reduced impact due to its limited distinctiveness and a figurative element that, visually, further distant the marks from each other.

Although in principle when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, this cannot be automatically assumed in each case, as the overall impression of the signs has to be assessed on a case-by-case basis and depends on all the relevant circumstances. In the present case, the silhouette of a woman in its stylised depiction is a distinctive and visually eye-catching element in the contested sign. The particular graphical depiction of that sign and the combination and arrangement of its elements have to be given appropriate significance when the visual impact of the marks is considered.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛M*N*ARI’, present identically in both signs. The pronunciation differs in the sound of the letters ‛A’ and ‛Z’ of the contested mark and the letter ‛O’ of the earlier sign. Due to the additional letter ‘Z’ in the contested sign the common letters are divided into different syllables – ‘MO-NA-RI’ vs ‘MAN-ZA-RI’, resulting in the fact that the marks coincide only in their final syllable and differ in their first two syllables. Moreover, the letter ‘Z’ in the middle of the contested sign’s first verbal element is rather characteristic and further sets the signs apart on an aural level, since it is not present in the earlier mark, something that will not go unnoticed by the relevant public. Furthermore, the pronunciation differs in the sound of the word ‘INTERNATIONAL’ of the contested mark which however is non-distinctive and has limited impact on the aural impression of the mark and has no counterpart in the earlier sign.

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

Conceptually, although the public in the relevant territory will perceive the meaning of one of the verbal elements of the contested sign and will perceive its figurative element as a woman’s silhouette, 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.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

In the present case, the relevant goods have been assumed to be identical and they target partly the public at large with an average degree of attention and partly a professional public. Furthermore, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness in relation to the relevant goods.

The signs are visually and aurally similar to a low degree. Additionally, the signs have no concept in common that could lead the relevant public to associate one with the other.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual difference between the signs caused by the figurative element and the overall graphical depiction of the contested sign is particularly relevant when assessing the likelihood of confusion between them.

The similarities between the signs in the letters ‛M*N*ARI’ are secondary within the overall impression given by the signs. Therefore, the coincidence in a string of letters does not by itself lead to a finding of likelihood of confusion. This combined with the fact that the contested sign contains an original figurative element leads the Opposition Division to the conclusion that the consumer will be able to safely distinguish the signs (23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy).

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

COSTS

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

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the holder did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Boyana NAYDENOVA

Benjamin Erik WINSNER

Pedro JURADO

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.