OPPOSITION No B 2 737 446
El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented
by J.M. Toro, S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional
a g a i n s t
Titan Ventures GmbH, Erikastraße 57a, 20251 Hamburg, Germany and Wind
Ventures Beteiligungs GmbH, Sickendamm 17, 25746 Heide, Germany (together
referred to as ‘applicant’), represented by CBH Rechtsanwälte Cornelius
Bartenbach Haesemann & Partner, Tesdorpfstrasse 8, 20148 Hamburg, Germany
On 08/01/2018, the Opposition Division takes the following
1. Opposition No B 2 737 446 is partially upheld, namely for the following
contested goods and services:
Class 25: Clothing, apparel; Footwear; Headgear.
Class 35: Wholesaling and retailing of clothing, footwear and headgear.
2. European Union trade mark application No 15 412 455 is rejected for all the
above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 412 455 ‘Mialia’. The opposition is based on,
inter alia, European Union trade mark registration No 3 788 999 ‘ALIA’. The opponent
invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 737 446 page: 2 of 8
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 European Union trade mark registration No 3 788 999 ‘ALIA’.
a) The goods and services
The goods on which the opposition is based are the following:
Class 3: Perfumery, essential oils, cosmetics, hair lotions; dentrifrices.
Class 14: Precious metals and their alloys and goods in precious metals or
coated therewith not included in other classes; jewellery, costume
jewellery, precious stones; horological and chronometic instruments.
Class 18: Leather and imitations of leather, and goods made of these materials
(not included in other classes); animal skins, hides; trunks and
traveling bags; umbrellas, parasols, canes and walking sticks; whips,
harness and saddlery.
Class 25: Clothing, footwear and headgear.
The contested goods and services are the following:
Class 25: Clothing, apparel; Footwear; Headgear.
Class 35: Wholesaling and retailing of textiles, clothing, footwear and headgear.
Class 42: Design of printed matter, for others, in particular for clothing, footwear
and headgear; providing of internet-supported media-neutral
databases for designing and producing printed matter.
The term ‘in particular’, used in the applicant’s list of services in Class 42, indicates
that the specific design of printed matter services for clothing, footwear and headgear
are only examples of items included in the broad category of design of printed matter
for others and that protection is not restricted to them. In other words, it introduces a
non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
Decision on Opposition No B 2 737 446 page: 3 of 8
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 goods in Class 25 are covered by both specifications in exactly the same terms.
It is to be noted that apparel is synonym to clothing. Moreover, the separate
appearance of the term ‘apparel’ in the contested specification seems to be a
translation issue. The goods are identical.
Contested services in Class 35
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 of clothing, footwear and headgear are similar to a
low degree to the opponent’s clothing, footwear and headgear.
The same principles apply to services rendered in connection with other types of
services that consist exclusively of activities revolving around the actual sale of
goods, such as wholesale services. Therefore, the contested wholesaling of clothing,
footwear and headgear are also similar to a low degree to the opponent’s clothing,
footwear and headgear.
Retail and wholesale services of textiles and the opponent’s goods in Classes 25, 18,
14 and 3 are dissimilar. Apart from being different in nature, since services are
intangible whereas goods are tangible, they serve different needs. Retail and
wholesale services on one hand and the opponent’s goods on the other hand have
different purposes. Furthermore, goods and services have different methods of use
and are neither in competition nor complementary.
Similarity between retail and wholesale 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 and wholesale 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 not identical.
Contested services in Class 42
The contested design of printed matter, for others, in particular for clothing, footwear
and headgear; providing of internet-supported media-neutral databases for designing
and producing printed matter are specific services that cannot be found similar to any
of the opponent’s goods by applying the similarity criteria as specified above. The
services design of printed matter, for others, in particular for clothing, footwear and
headgear even though mentioning clothing, footwear and headgear (as a matter of
example) remain in their substance design of printed matter services and not design
of clothing, footwear and headgear services. While the latter might be considered
similar to a low degree to clothing, footwear and headgear, this is not the case in the
current opposition proceedings. Design of printed matter is dissimilar to any and all of
the opponent’s goods, as they do not have criteria in common which taken separately
Decision on Opposition No B 2 737 446 page: 4 of 8
or in combination can result in any level of similarity between them. The same is valid
also for the services providing of internet-supported media-neutral databases for
designing and producing printed matter. They are also considered dissimilar to any
and all of the opponent’s 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 found to be identical and the retailing services found
to be similar to a low degree to some of the opponent’s goods are directed at the
public at large. The wholesaling services found to be similar to a low degree to some
of the opponent’s goods are directed at business customers with specific professional
knowledge or expertise.
The degree of attention is considered to be average.
c) The signs
Earlier trade mark Contested sign
The relevant territory is the European Union.
In the case of word marks, the use of upper or lower case letters is irrelevant.
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 Opposition Division finds it appropriate to focus the comparison of the signs on
the Spanish language-speaking part of the public such as the population of Spain.
While the verbal element ‘ALIA’ has no meaning in Spanish, at least part of the public
may perceive the contested mark as composed of ‘Mi’ and ‘alia’. This is because ‘Mi’
in Spanish has a meaning (me, my, mine) and is one of the most frequently used
words. Moreover, in recent years, in particular in relation to online businesses the
word ‘Mi’ in combination with generic terms such as ‘cuenta’ or ‘factura’ (‘Mi cuenta’,
‘mi factura’) or the name of the business, for instance ‘Mi Orange’ (to indicate the
Decision on Opposition No B 2 737 446 page: 5 of 8
user’s area) became so prevalent that even in combination with a meaningless word
it will evoke the particular concept embodied in this promotional semantic structure –
something that is tailored to the particular needs of the individual consumer or
something that can easily be modified by the individual consumer, something that
serves the particular personal needs best, goods and/or services that are the
consumer’s favourite choice, etc.
Another part of the public will perceive the contested sign as a fanciful
verbal element with no particular meaning.
The applicant’s argument that the contested sign will be perceived as
composed of the two well-known girls’ names ‘Mia’ and ‘Lia’ cannot be
sustained with regard to the perception of the Spanish-language speaking
part of the public such as the population of Spain. First of all, Wikipedia
excerpts cannot be credited. Second, even the Wikipedia excerpt speaks
only about use of the name ‘Mia’ in countries and territories such as
Central Europe and Australia. The list of notable individuals with the given
name Mia does not include a single Spanish individual. Most of them are
American, the remaining ones are Australian, British, Finnish, Canadian,
Lebanese, Swiss, Italian, Japanese, Lithuanian.
The same observations regarding the probative value of Wikipedia
excerpts and the use of the name ‘Lia’ and ‘Alia’ in Spain are valid to a
great extent also for the Wikipedia articles regarding the names ‘Lia’ and
‘Alia’. It is to be added that in Spanish as suggested by the article itself the
name ‘Lia’ is accented ‘Lía’. There is therefore, no reason to believe that
the Spanish consumer will split the contested sign in ‘Mia’ and ‘Lia’, or to
assume that ‘Alia’ is a given name.
It is also unlikely that the average Spanish consumer will associate ‘alia’
with a particular meaning just because it is one of the two components of
the Latin expression ‘inter alia’ which is rarely used outside of some
specialised professional texts, and certainly not in everyday language. It
will require too many mental steps for the average Spanish consumer in
order to land at the meaning suggested by the applicant (if at all) following
the semantic logic developed by the applicant.
It can be concluded that, if split in various components, the most likely
way of perceiving the contested sign is as ‘Mi’ and ‘alia’ for the reasons
explained above where the component ‘alia’ will not be perceived with a
The marks have no elements which can be considered more distinctive or dominant
than other elements. The distinctiveness of the earlier mark will be discussed in
section d) of the decision.
Visually, the signs coincide in ‘-alia’. However, they differ in ‘Mi-’ of the contested
sign which has no counterpart in the earlier mark. Even though indeed the beginning
of signs is usually given more importance in terms of recognition and recall the fact
remains that the marks coincide in four letters (the entire earlier mark) out of six (the
contested sign) placed in the same sequence. In the absence of any particular
figurative adornments the signs are to be considered similar to an average degree.
Decision on Opposition No B 2 737 446 page: 6 of 8
Aurally, the pronunciation of the signs coincides in the sound of the letters /ALIA/,
present identically in both signs. The pronunciation differs in the sound of the
letters /MI/ of the contested mark, which have no counterpart in the earlier mark. The
pronunciation of the contested sign may differ according to the possible perception of
it as a single fantasy verbal element or as a verbal element comprising the
components ‘Mi’ and ‘alia’. In the first case it will be pronounced as a single word with
the stress on the second syllable, while in the second scenario it will be pronounced
as two separate words where in the word ‘alia’ the stress will be put on the second
In any of the two possible scenarios, the signs are to be considered similar to an
Conceptually, for the part of the public that will perceive the contested sign as a
whole neither of the signs has a meaning. Since a conceptual comparison is not
possible, the conceptual aspect does not influence the assessment of the similarity of
For the part of the public that will perceive the contested sign as composed of ‘Mi’
and ‘alia’ and hence with the concept of ‘Mi’ as such and with the concept that goes
beyond the word ‘Mi’ as explained above since the earlier sign 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 Spanish-
speaking public. Therefore, the distinctiveness of the earlier mark must be seen as
e) Global assessment, other arguments and conclusion
The goods are identical. Part of the contested services are similar to a low degree to
the opponent’s goods while another part of the contested services are dissimilar to
the opponent’s goods. The signs are visually and aurally similar. The distinctiveness
of the earlier mark is average and so is the level of attention of the relevant
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.
Decision on Opposition No B 2 737 446 page: 7 of 8
Bearing in mind that the conflicting goods and services relate broadly speaking to the
field of fashion and retail/wholesale of fashion articles such as clothing, footwear and
headgear, it is highly conceivable that the relevant consumer will perceive the
contested mark as a sub-brand, a variation of the earlier mark, 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). Even though the verbal element
‘alia’ has no particular meaning for the relevant consumer the semantic construction
‘Mi-alia’ is highly likely to be associated with the earlier mark ‘ALIA’ for the reasons
explained in section b) of the decision.
Even in the case where the contested sign will be perceived as a single indivisible
fantasy element, the likelihood of confusion cannot still be safely excluded. 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). Bearing in
mind that the signs coincide in four out of six letters and in the absence of particular
concepts which would help consumers to distinguish between the signs on a
conceptual level the Opposition Division finds that there is likelihood of confusion on
behalf of the Spanish consumer.
Therefore the opposition is partly well founded on the basis of the opponent’s
European Union trade mark registration No 3 788 999. 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.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical to those of the earlier trade mark.
The opposition is also successful insofar as the services that are similar to a low
degree to the opponent’s goods are concerned since the similarity between the signs
is enough to justify a finding of likelihood of confusion (and in particular likelihood of
association) bearing in mind also the specifics of the fashion sector where many
manufacturers of clothing, footwear and headgear have their own distribution
(wholesale/retail) shops/networks. This finding is further supported by the notion
developed in relation to the promotional character of the semantic structure ‘Mi’ plus
‘any word’ conveying in the particular case the idea of a shop/chain of retailing shops
tailored to the specific needs of the individual consumer to satisfy the demand of
goods bearing the trade mark ‘ALIA’.
The rest of the contested 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 services cannot be successful.
The opponent has also based its opposition on the following earlier trade mark:
European Union trade mark registration No 11 989 456
covering the goods in Class 25 Linen. The latter is to be interpreted as ‘clothing’
(from Spanish ‘Ropa’ as indicated in the first language of the application). In any case
since this mark covers a narrower scope of goods which are clearly dissimilar to the
remaining services, the outcome cannot be different with respect to services for
which the opposition has already been rejected. Therefore, no likelihood of confusion
exists with respect to these services.
Decision on Opposition No B 2 737 446 page: 8 of 8
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some 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
Angela Di BLASIO Plamen IVANOV Irina SOTIROVA
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.