OPPOSITION No B 2 782 459

Accessorize Limited, 1 Nicholas Road, London W11 4AN, United Kingdom (opponent), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford's Inn, London EC4A 1BL, United Kingdom (professional representative)

a g a i n s t

Cemsel Tekstil Sanayi Ve Ticaret Anonim Sirketi, Baglar Mahallesi Çesme Sokak, No:43 Günesli, Bagcilar – Istanbul, Turkey (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq. 3º Izq., 28020 Madrid, Spain (professional representative).

On 22/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 782 459 is partially upheld, namely for the following contested goods and services:

Class 3:        Cosmetics; deodorants and antiperspirants; soaps; perfumery; essential oils; hair lotion; hair dye; hair spray; shampoo; dentifrices; make-up removing preparations; body powder (non-medicated -); nail polish; lipstick; lipstick cases; bath salts; baths (cosmetic preparations for -); depilatories; sun-tanning preparations (cosmetics); tissues impregnated with cosmetic lotions; cotton sticks for cosmetic purposes; baby care products (non-medicated -); baby oils; baby powder; baby shampoo; baby lotions; baby wipes; babies' creams [non-medicated]; household fragrances; air fragrancing preparations; potpourris [fragrances]; joss sticks; scented wood.

Class 4:            Candles and wicks for lighting; perfumed candles.

Class 9:        Spectacles [optics]; lenses for eyeglasses; sunglasses; sports glasses; snow goggles; spectacle frames; spectacle cases; bags adapted for laptops; sleeves for laptops; covers for smartphones; leather cases for smartphones; tablet covers; cases for tablet computers; leather cases for tablet computers; compact discs; DVDs; USB flash drives; computer software; application software; computer software; computer programs [downloadable software]; protective clothing for the prevention of injury; protective shoes [against accident or injury]; protective helmets for sports; ski helmets; snowboard helmets; helmets for bicycles; sports eyewear.

Class 14: Jewels; ornaments [jewellery, jewelry (am.)]; paste jewellery [costume jewelry (am.)]; pins being jewelry; ornamental pins; pearls [jewellery, jewelry (am.)]; chronoscopes; watch chains; bracelets [jewellery, jewelry (am.)]; watchstraps; cuff links; jewel cases; housings for clocks and watches; alarm clocks; key rings [trinkets or fobs]; alloys of precious metal.

Class 16:        Paper; millboard; printed matter; photographs; wrapping materials made of paper; plastic materials for packaging; fiberboard boxes; bookbinding material; scrapbooks; calendars; notebooks; note pads; pencil boxes; seals [stamps]; sealing wax; seals [stamps]; stamp pads; writing paper; writing tablets; paper for cupboards and drawers (perfumed or non-perfumed); books; newspapers; magazines [periodicals]; office requisites (except furniture); boxes and bags of paper and/or cardboard for decorative packaging or presentation of fashion items and fashion accessories, jewellery and costume jewellery, cosmetics and household accessories; patterns for making clothes; passport covers; stickers [stationery]; tailors' chalk.

Class 18:        Trunks and travelling bags; backpacks; casual bags; handbags; beach bags; slings for carrying infants; bags for campers; net bags for shopping; shopping bags; hipsacks; vanity cases, not fitted; cosmetic purses; toiletry bags; school knapsacks; satchels; garment bags for travel; travelling sets [leatherware]; business card cases; credit-card holders; keycases; briefbags; attache cases; dog leashes; animal carriers [bags]; luggage label holders; hat boxes of leather; laces (leather -); wallets; purses; collars for animals; umbrellas; parasols; whips; harnesses; saddlery; clothing for pets.

Class 24:        Fabrics; fabrics; knitted fabric; curtain fabric; linings [textile].

Class 25:        Clothing; footwear; headgear; belts [clothing]; gloves [clothing].

Class 26:        Badges for wear, not of precious metal; patches for clothing; brooches [clothing accessories]; belt buckles; hair twisters [hair accessories]; zippers; hair scrunchies; bows for the hair; sequins; beads other than for making jewelry [haberdashery]; zipper pulls; buttons; buttons for clothing; hooks and eyes; needles; elastic ribbons; ribbons of textile materials; hair bands; elastic for tying hair; shoe laces; lanyards [cords] for wear; lace; embroidery; embroidery for garments.

Class 35:        Auctioneering provided on the internet; retailing and wholesaling (including teleshopping channels), and online and catalogue mail order trading, all relating to cosmetics, deodorants and antiperspirants, soaps, perfumery, essential oils, hair lotions, hair dyes, hair spray, hair washing preparations, dentifrices, make-up removing preparations, body powders, not for medical purposes, nail polish, lipsticks, lipstick cases, bath salts, cosmetic preparations for the bath (perfumery), depilatories, sun-tanning preparations (cosmetics), tissues impregnated with cosmetic lotions, cotton sticks for cosmetic purposes, care products for babies, not for medical purposes, baby oils, baby powder, baby shampoo, baby lotions, cloths for cleaning babies, baby creams (not for medical purposes), air fresheners, air fragrancing preparations, potpourris (fragrances), joss sticks, scented wood, washing preparations, candles and wicks for lighting, perfumed candles, spectacles (optics), spectacle lenses, sunglasses, goggles for sports, ski goggles, spectacle frames, spectacle cases, credit cards, encoded customer cards, bags adapted for laptops, sleeves for laptops, sleeves for smartphones, leather sleeves for smartphones, covers for tablet computers, cases for tablet computers, leather sleeves for tablet computers, compact discs, DVDs, USB flash drives, computer software, application software, computer programs (downloadable software), electronic tags for goods, protective clothing for preventing injuries, shoes for protecting against accidents or injuries, protective helmets for sports, ski helmets, snowboard helmets, bicycle helmets, protective goggles for sports, jewellery, costume jewellery, pins (jewellery), ornamental pins, pearls (jewellery), clocks and watches, watch chains, bracelets (jewellery), watch straps, cuff links, jewellery cases (caskets), cases for clock- and watchmaking, alarm clocks, key rings (trinkets or fobs), precious metals and their alloys, paper, cardboard, printed matter, photographs, packaging materials of paper, plastic materials for packaging, cardboard articles, bookbinding materials, albums, calendars, note books, note pads, boxes for pens, stamps (seals), sealing wax, sealing stamps, stamp pads, writing paper, writing paper pads, drawer liners of paper, perfumed or not, books, newspapers, periodicals (magazines), office requisites, except furniture, boxes and bags of paper and/or cardboard for decorative packaging or presentation of fashion items and fashion accessories, jewellery and costume jewellery, cosmetics and household accessories, patterns for making clothes, passport holders, stickers, tailors' chalk, trunks and travelling bags, backpacks, bags, handbags, beach bags, slings for carrying infants, bags for campers, net bags for shopping, shopping bags, hip bags, vanity cases, not fitted, cosmetics containers, toiletry bags, school bags, school satchels, garment bags for travel, leather, imitations of leather, travelling sets (leatherware), business card holders, credit card holders, key cases, briefcases (leatherware), attaché cases, dog leashes, carrying devices for animals (bags), tags for luggage, hat boxes of leather, leather laces, pocket wallets, purses, collars for animals, umbrellas, parasols, walking sticks, animal skins, hides, whips, harness, saddlery, clothing for animals, fabrics, woven material, textile goods (household goods), knitted fabric, towels, shower curtains of textile or plastic, bed covers (bed linen), bed linen, covers for cushions, tablemats, table runners, table linen, lining fabric for sleeping bags, curtain fabric, curtains of textile or plastic, drapes, linings, coverings of plastic for furniture, coverings of textile for furniture, loose covers for furniture, place mats, not of paper, quilts, travelling rugs (lap robes), towels of textile, napkins of textile, handkerchiefs of textile, clothing, footwear, headgear, belts (clothing), gloves (clothing), badges for wear, not of precious metal, patches for clothing, brooches (clothing accessories), belt buckles, hair accessories for twisting the hair, zip fasteners, hair ties, bows for the hair, spangles, pearls, other than for manufacturing jewellery (haberdashery), zipper pulls, buttons, buttons for clothing, hooks and eyes, pins and needles, elastic ribbons, ribbons of textile, ribbons for wearing in the hair, elastic ribbons for the hair, shoe laces, laces (cords) for clothing, lace, embroidery, embroidery for clothing.

2.        European Union trade mark application No 15 402 134 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 some of the goods and services of European Union trade mark application No 15 402 134 ‘MORE & CO. ACCESSORIZE’, namely against all the goods in Classes 3, 4, 9, 14, 16, 18, 24, 25 and 26 and some of the services in Classes 35 and 45. The opposition is based on European Union trade mark registrations No 2 758 027 ‘ACCESSORIZE’, No 1 828 250 ‘ACCESSORIZE’ and No 2 946 630. 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.

1. The goods and services

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

European Union trade mark registration No 2 758 027 (earlier mark 1):

Class 3:        Soaps for personal use, shampoos, perfumes, toilet waters, eau de cologne, cosmetics, non-medicated toilet preparations; non-medicated toilet preparations for application to, conditioning and care of the skin, body and scalp; body sprays; depilatory preparations; non-medicated hair preparations; dentifrices; essentials oils; anti-perspirants; preparations for the bath and shower; bath oils; bath salts; talcum powder; aromatherapy oils; fragrances.

Class 9:        Sunglasses, spectacles, frames and lenses; cords and cases all for sunglasses and spectacles; cameras, optical apparatus and instruments, audio and video apparatus and instruments, televisions, computers and computer software; videos, CDs, DVDs, tapes and cassettes.

Class 14:        Jewellery and imitation jewellery; precious stones; precious metals and their alloys and articles included in class 14 made from the aforesaid materials or coated therewith; watches and clocks.

Class 18:        Bags, tote bags, shoulder bags, bags, handbags, purses, cases, wallets, travelling bags, suitcases, holdalls, rucksacks, backpacks; briefcases, umbrellas, parasols; luggage; articles made of leather or of imitation leather.

Class 25:        Articles of clothing; footwear, neckwear, headwear, gloves, rainwear, swimwear and beachwear; lingerie.

Class 26:        Hair ornaments, hair pins, hair slides, hair ribbons; hair adomments; braids, ribbons, lace and embroidery; badges.

European Union trade mark registration No 1 828 250 (earlier mark 2):

Class 35:        The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothing and fashion accessory store; retail services relating to the sale of clothing, headwear, neckwear, footwear, lingerie, jewellery, imitation jewellery, bags, belts and fashion accessories.

European Union trade mark registration No 2 946 630 (earlier mark 3):

Class 4:        Candles, fragranced or scented candles, illuminants, wicks, nightlights, fuels, oils, lubricants and greases.

Class 16:        Printed publications and printed matter; paper, books, address books, note books and note pads, periodicals and magazines; writing implements; photographs, pictures, maps, articles of stationery; diaries, calendars, wall planners, posters, writing cases, paperweights, serviettes, paper tissues, coasters and table mats, greetings cards and stickers.

Class 35:        The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothing accessories and fashion accessories store, by mail order, from a catalogue, an Internet web site and a television shopping channel, all specialising in clothing, fashion accessories and general merchandise.

The contested goods and services are the following:

Class 3:        Cosmetics; deodorants and antiperspirants; soaps; perfumery; essential oils; hair lotion; hair dye; hair spray; shampoo; dentifrices; make-up removing preparations; body powder (non-medicated -); nail polish; lipstick; lipstick cases; bath salts; baths (cosmetic preparations for -); depilatories; sun-tanning preparations (cosmetics); tissues impregnated with cosmetic lotions; cotton sticks for cosmetic purposes; baby care products (non-medicated -); baby oils; baby powder; baby shampoo; baby lotions; baby wipes; babies' creams [non-medicated]; household fragrances; air fragrancing preparations; potpourris [fragrances]; joss sticks; scented wood; laundry preparations.

Class 4:        Candles and wicks for lighting; perfumed candles.

Class 9:        Spectacles [optics]; lenses for eyeglasses; sunglasses; sports glasses; snow goggles; spectacle frames; spectacle cases; credit cards; encoded loyalty cards; bags adapted for laptops; sleeves for laptops; covers for smartphones; leather cases for smartphones; tablet covers; cases for tablet computers; leather cases for tablet computers; compact discs; DVDs; USB flash drives; computer software; application software; computer software; computer programs [downloadable software]; electronic tags for goods; protective clothing for the prevention of injury; protective shoes [against accident or injury]; protective helmets for sports; ski helmets; snowboard helmets; helmets for bicycles; sports eyewear.

Class 14:        Jewels; ornaments [jewellery, jewelry (am.)]; paste jewellery [costume jewelry (am.)]; pins being jewelry; ornamental pins; pearls [jewellery, jewelry (am.)]; chronoscopes; watch chains; bracelets [jewellery, jewelry (am.)]; watchstraps; cuff links; jewel cases; housings for clocks and watches; alarm clocks; key rings [trinkets or fobs]; alloys of precious metal.

Class 16:        Paper; millboard; printed matter; photographs; wrapping materials made of paper; plastic materials for packaging; fiberboard boxes; bookbinding material; scrapbooks; calendars; notebooks; note pads; pencil boxes; seals [stamps]; sealing wax; seals [stamps]; stamp pads; writing paper; writing tablets; paper for cupboards and drawers (perfumed or non-perfumed); books; newspapers; magazines [periodicals]; office requisites (except furniture); boxes and bags of paper and/or cardboard for decorative packaging or presentation of fashion items and fashion accessories, jewellery and costume jewellery, cosmetics and household accessories; patterns for making clothes; passport covers; stickers [stationery]; tailors' chalk.

Class 18:        Trunks and travelling bags; backpacks; casual bags; handbags; beach bags; slings for carrying infants; bags for campers; net bags for shopping; shopping bags; hipsacks; vanity cases, not fitted; cosmetic purses; toiletry bags; school knapsacks; satchels; garment bags for travel; hides; imitation leather; travelling sets [leatherware]; business card cases; credit-card holders; keycases; briefbags; attache cases; dog leashes; animal carriers [bags]; luggage label holders; hat boxes of leather; laces (leather -); wallets; purses; collars for animals; umbrellas; parasols; walking sticks; animal skins, hides; whips; harnesses; saddlery; clothing for pets.

Class 24:        Fabrics; fabrics; household textile articles; knitted fabric; towels of textile; shower curtains of textile or plastic; comforters; bed linen; cushion covers; table covers; table runners; table linen; sleeping bags [sheeting]; curtain fabric; curtains of textile or plastic; curtains; linings [textile]; furniture coverings of plastic; furniture coverings of textile; coverings for furniture; place mats, not of paper; quilts; travelling rugs [lap robes]; towels of textile; textile napkins; handkerchiefs of textile.

Class 25:        Clothing; footwear; headgear; belts [clothing]; gloves [clothing].

Class 26:        Badges for wear, not of precious metal; patches for clothing; brooches [clothing accessories]; belt buckles; hair twisters [hair accessories]; zippers; hair scrunchies; bows for the hair; sequins; beads other than for making jewelry [haberdashery]; zipper pulls; buttons; buttons for clothing; hooks and eyes; needles; elastic ribbons; ribbons of textile materials; hair bands; elastic for tying hair; shoe laces; lanyards [cords] for wear; lace; embroidery; embroidery for garments.

Class 35:        Auctioneering provided on the internet; demonstration of goods; loyalty, incentive and bonus program services; operation of an online customer club for business, sales promotion and/or advertising purposes; product demonstrations in shop windows and television sales programmes featuring live models; presentation of goods on communication media, for retail purposes; demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; retailing and wholesaling (including teleshopping channels), and online and catalogue mail order trading, all relating to cosmetics, deodorants and antiperspirants, soaps, perfumery, essential oils, hair lotions, hair dyes, hair spray, hair washing preparations, dentifrices, make-up removing preparations, body powders, not for medical purposes, nail polish, lipsticks, lipstick cases, bath salts, cosmetic preparations for the bath (perfumery), depilatories, sun-tanning preparations (cosmetics), tissues impregnated with cosmetic lotions, cotton sticks for cosmetic purposes, care products for babies, not for medical purposes, baby oils, baby powder, baby shampoo, baby lotions, cloths for cleaning babies, baby creams (not for medical purposes), air fresheners, air fragrancing preparations, potpourris (fragrances), joss sticks, scented wood, washing preparations, candles and wicks for lighting, perfumed candles, spectacles (optics), spectacle lenses, sunglasses, goggles for sports, ski goggles, spectacle frames, spectacle cases, credit cards, encoded customer cards, bags adapted for laptops, sleeves for laptops, sleeves for smartphones, leather sleeves for smartphones, covers for tablet computers, cases for tablet computers, leather sleeves for tablet computers, compact discs, DVDs, USB flash drives, computer software, application software, computer programs (downloadable software), electronic tags for goods, protective clothing for preventing injuries, shoes for protecting against accidents or injuries, protective helmets for sports, ski helmets, snowboard helmets, bicycle helmets, protective goggles for sports, jewellery, costume jewellery, pins (jewellery), ornamental pins, pearls (jewellery), clocks and watches, watch chains, bracelets (jewellery), watch straps, cuff links, jewellery cases (caskets), cases for clock- and watchmaking, alarm clocks, key rings (trinkets or fobs), precious metals and their alloys, paper, cardboard, printed matter, photographs, packaging materials of paper, plastic materials for packaging, cardboard articles, bookbinding materials, albums, calendars, note books, note pads, boxes for pens, stamps (seals), sealing wax, sealing stamps, stamp pads, writing paper, writing paper pads, drawer liners of paper, perfumed or not, books, newspapers, periodicals (magazines), office requisites, except furniture, boxes and bags of paper and/or cardboard for decorative packaging or presentation of fashion items and fashion accessories, jewellery and costume jewellery, cosmetics and household accessories, patterns for making clothes, passport holders, stickers, tailors' chalk, trunks and travelling bags, backpacks, bags, handbags, beach bags, slings for carrying infants, bags for campers, net bags for shopping, shopping bags, hip bags, vanity cases, not fitted, cosmetics containers, toiletry bags, school bags, school satchels, garment bags for travel, leather, imitations of leather, travelling sets (leatherware), business card holders, credit card holders, key cases, briefcases (leatherware), attaché cases, dog leashes, carrying devices for animals (bags), tags for luggage, hat boxes of leather, leather laces, pocket wallets, purses, collars for animals, umbrellas, parasols, walking sticks, animal skins, hides, whips, harness, saddlery, clothing for animals, fabrics, woven material, textile goods (household goods), knitted fabric, towels, shower curtains of textile or plastic, bed covers (bed linen), bed linen, covers for cushions, tablemats, table runners, table linen, lining fabric for sleeping bags, curtain fabric, curtains of textile or plastic, drapes, linings, coverings of plastic for furniture, coverings of textile for furniture, loose covers for furniture, place mats, not of paper, quilts, travelling rugs (lap robes), towels of textile, napkins of textile, handkerchiefs of textile, clothing, footwear, headgear, belts (clothing), gloves (clothing), badges for wear, not of precious metal, patches for clothing, brooches (clothing accessories), belt buckles, hair accessories for twisting the hair, zip fasteners, hair ties, bows for the hair, spangles, pearls, other than for manufacturing jewellery (haberdashery), zipper pulls, buttons, buttons for clothing, hooks and eyes, pins and needles, elastic ribbons, ribbons of textile, ribbons for wearing in the hair, elastic ribbons for the hair, shoe laces, laces (cords) for clothing, lace, embroidery, embroidery for clothing.

Class 45:        Rental of clothing; personal shopper services; preparation of customized gift boxes; personal gift selection for others.

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 3

Cosmetics; antiperspirants; essential oils; shampoo; dentifrices; bath salts; baths (cosmetic preparations for -); depilatories are identically contained in both lists of goods (including synonyms).

The contested deodorants overlap with the opponent’s anti-perspirants, as far as they could be in the form of anti-perspirant deodorants. It follows that these are identical.

The contested soaps include as a broader category the opponent’s soaps for personal use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested perfumery includes as a broader category the opponent’s perfumes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested potpourris [fragrances] overlap with the opponent’s perfumes. It follows that these are identical.  

The opponent’s non-medicated hair preparations include as a broader category the contested hair lotion; hair dye; hair spray. It follows that these are identical.

The contested body powder (non-medicated -) includes as a broader category the opponent’s talcum powder. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested baby powder overlaps with the opponent’s talcum powder, as far as they both could be talcum powder for babies. It follows that these are identical. 

The contested make-up removing preparations; nail polish; lipstick; sun-tanning preparations (cosmetics); tissues impregnated with cosmetic lotions; baby care products (non-medicated -); baby oils; baby shampoo; baby lotions; baby wipes; babies' creams [non-medicated] are included in the broader category of, or overlap with the opponent’s cosmetics. These are, therefore, considered identical.

The opponent’s fragrances include as a broader category, or overlap with, the contested household fragrances; air fragrancing preparations; joss sticks; scented wood. It follows that these are identical.

The contested cotton sticks for cosmetic purposes are similar to the opponent’s cosmetics as the goods coincide in producer, end user and distribution channels.

The contested lipstick cases share producer, end user and distribution channels with the opponent’s cosmetics. Furthermore, they are complementary to the opponent’s goods. It follows that these are similar.

However, the contested laundry preparations are preparations used for washing of clothing and linen. These are not similar to any of the opponent’s goods in Class 3 or the remaining classes. Even though some of the opponent’s goods, such as soaps for personal use are meant for cleaning, these are purposed for use on the human’s body and thus are body cleaning preparations. The contested goods and the opponent’s goods would not usually coincide in producer and even if found in the same department store, they will not be placed next to each other. Furthermore, they are neither complementary, nor in competition. The contested goods are dissimilar to the opponent’s goods.

Furthermore, the contested goods are not similar to the opponent’s services in Class 35, which are retail services of specific goods different than the contested goods. 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. 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 goods and the opponent’s services are dissimilar. 

Contested goods in Class 4

The contested candles for lighting; perfumed candles are included in the broader category of the opponent’s candles. The goods are identical.

The contested wicks for lighting are included in the broader category of the opponent’s wicks. The goods are identical.

Contested goods in Class 9

Spectacles [optics]; sunglasses; spectacle cases; compact discs; DVDs; computer software (listed twice in the list of the contested goods) are identically contained in both lists of goods (including synonyms).

The contested lenses for eyeglasses are included in the broader category of the opponent´s lenses. These are, therefore, considered identical.

The contested sports glasses; sports eyewear overlap with the opponent´s sunglasses, as far as they could be sports sunglasses. These are, therefore, considered identical.

The contested snow goggles are included in the broad category of the opponent´s optical apparatus and instruments. The goods are considered identical.

The contested spectacle frames are included in the broad category of the opponent´s frames. These are, therefore, considered identical.

The contested application software; computer programs [downloadable software] are included in the broader category of the opponent´s computer software. The goods are considered identical.

The contested USB flash drives are data storage devices and they are complementary to the opponent’s computers. The goods also coincide in producer, end user and distribution channels. These are, therefore considered similar to a high degree.

The contested bags adapted for laptops; sleeves for laptops; tablet covers; cases for tablet computers; leather cases for tablet computers are similar to the opponent’s computers, which could also be in the form of tablet computers or laptops. The goods coincide in producer, end user and distribution channels and are furthermore complementary.  

The opponent’s audio and video apparatus are apparatus which could be for recording, transmission and reproduction of sound or images, which includes smartphones as well. The contested covers for smartphones; leather cases for smartphones coincide with the opponent’s goods in producer, end user and distribution channels and are furthermore complementary. The goods are considered to be similar.

The contested protective clothing for the prevention of injury coincides with the opponent’s articles of clothing in Class 25 in their nature and method of use, namely they are garments which are placed as to cover the human body. They also coincide in the relevant public. It follows that these are similar to a low degree.  

Consequently, the contested protective shoes [against accident or injury] are similar to a low degree to the opponent’s footwear in Class 25, as the goods coincide in their nature, method of use and relevant public.  

The contested protective helmets for sports; ski helmets; snowboard helmets; helmets for bicycles are similar to a low degree to the opponent’s headwear in Class 25, as the goods coincide in their nature, method of use and relevant public.  

The contested electronic tags for goods are security tags, used for protecting goods from theft and the contested credit cards; encoded loyalty cards are payment cards and cards giving the right to certain preferential treatment to customers. They have nothing in common with the opponent´s goods or services. They do not coincide in producer, end user or distribution channels. They are neither complementary nor in competition with the opponent´s goods or services. Furthermore, they do not share the same nature, method of use or purpose. It follows that these goods are dissimilar to the opponent’s goods and services.

Contested goods in Class 14

Jewels; alloys of precious metal are identically contained in both lists of goods (including synonyms).

The contested ornaments [jewellery, jewelry (am.)]; paste jewellery [costume jewelry (am.)]; pins being jewelry; ornamental pins; pearls [jewellery, jewelry (am.)]; bracelets [jewellery, jewelry (am.)]; key rings [trinkets or fobs]; cuff links are included in the broad category of the opponent’s jewellery. The goods are considered identical.

The contested alarm clocks are included in the broader category of the opponent’s clocks. These are, therefore, considered identical.

The contested chronoscopes are devices for measuring short time intervals, especially in determining the velocity of projectiles, or a person's reaction time. These overlap with the opponent’s watches insofar as they could be chronoscope watches. The goods are, therefore, considered identical.

The contested jewel cases are similar to the opponent’s jewellery as they are complementary to them and the goods coincide in producer, end user and distribution channels.

The contested housings for clocks are complementary to the opponent’s clocks. The goods, furthermore, coincide in producer and the relevant public. These are, therefore, considered similar.

The contested housings for watches are complementary to the opponent’s watches. The goods, furthermore, coincide in producer and the relevant public. These are, therefore, considered similar.

The same reasoning applies for the contested watch chains; watchstraps, which are similar to the opponent’s watches, as there is a complementarity between the goods and they furthermore coincide in producer and the relevant public.  

Contested goods in Class 16

Paper; printed matter; photographs; calendars; notebooks; note pads; books; magazines [periodicals]; stickers [stationery] are identically contained in both lists of goods (including synonyms).

The contested newspapers are included in the broader category of the opponent’s printed matter. These are, therefore, considered identical.

The contested millboard (being a type of a cardboard); scrapbooks; pencil boxes; seals [stamps]; sealing wax; seals [stamps]; stamp pads; writing paper; writing tablets; office requisites (except furniture); tailors' chalk are included in the broad category of, or overlap with, the opponent’s articles of stationery. The goods are, therefore, considered identical.

The contested bookbinding material overlaps with the opponent’s paper insofar as both categories include book repair paper for book binding. The goods are, therefore, considered identical.

The contested paper for cupboards and drawers (perfumed or non-perfumed) is included in the broader category of the opponent’s paper. The goods are, therefore, considered identical.  

The contested wrapping materials made of paper overlap with the opponent’s paper insofar as both categories include paper for wrapping. It follows that the goods are identical. 

The contested patterns for making clothes, being templates (usually made of paper) from which the parts of a garment are traced onto fabric before being cut out and assembled, are included in the broader category of the opponent’s printed matter. These are, therefore, considered identical.

The contested plastic materials for packaging coincide with the opponent’s paper in their purpose, namely they could both be used for packaging and are in competition. Furthermore, they coincide in end user and distribution channels. It follows that these are similar.  

The contested fiberboard boxes; boxes and bags of paper and/or cardboard for decorative packaging or presentation of fashion items and fashion accessories, jewellery and costume jewellery, cosmetics and household accessories are articles used for packaging, which can be made of cardboard (or types thereof). These coincide with the opponent’s paper in their purpose, namely they all could be used for packaging and are in competition. Furthermore, they coincide in end user and distribution channels. It follows that these are similar.  

The contested passport covers are devices used to cover and hold passports and are made usually of leather or imitation thereof. These are considered to be similar to the opponent’s purses in Class 18, which are also meant to hold and store documents/money. The goods share producer, end user and distribution channels.

Contested goods in Class 18

Travelling bags; backpacks; handbags; briefbags; wallets; purses; umbrellas; parasols are identically contained in both lists of goods (including synonyms).

The contested casual bags; beach bags; bags for campers; net bags for shopping; shopping bags; toiletry bags; garment bags for travel; animal carriers [bags]; hipsacks; school knapsacks; satchels are included in the broader category of the opponent’s bags. The goods are considered identical.

The contested vanity cases, not fitted; business card cases; credit-card holders; keycases; attache cases; luggage label holders (which could be in the form of cases) are included in, or overlap with the broader category of the opponent’s cases. The goods are considered identical.

The contested cosmetic purses are included in the broader category of the opponent’s purses. These are, therefore, considered identical.  

The opponent’s luggage includes a variety of carriers that could be used for carrying luggage. These, therefore include as a broader category the contested travelling sets [leatherware]. The goods are considered identical.

The contested hat boxes of leather, furthermore, overlap with the opponent’s luggage, as far as they both could be hat boxes of leather for travel. The goods are considered identical.

The contested trunks are large packing cases or boxes that clasp shut, used as luggage or for storage. The contested goods overlap with the opponent’s luggage. It follows that these are identical.

The opponent’s articles made of leather or of imitation leather and the contested slings for carrying infants coincide in their nature as they all could be goods made of leather or imitation thereof. Their purpose, in the broadest sense, may also be the same in that they are for carrying a living being from one place to another. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

Furthermore, the opponent’s articles made of leather and the contested dog leashes; laces (leather -); collars for animals; whips; harnesses; saddlery; clothing for pets coincide in their nature, as they all could be goods made of leather. Their purpose, in the broadest sense, may also be the same in that the contested goods are and the opponent’s goods may also be for leading, dressing or equipping a living being. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

The contested walking sticks are canes or other staffs used as aids for walking; the contested animal skins, hides (listed twice); imitation leather refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for the opponent’s footwear in Class 25) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels are different. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. Furthermore, the remaining contested goods are sold in different outlets; they are of a different nature and serve a different purpose from the opponent’s goods and services. Therefore, these are dissimilar.

Contested goods in Class 24

Fabrics (listed twice); knitted fabric; curtain fabric; linings [textile] (which are the textiles used to line a garment) are materials made from yarn or fibres by weaving, knitting, felting, etc., which are sued for instance in the making of clothing or curtains. They are considered to be similar to the opponent’s lace and embroidery in Class 26. This is because they are goods with a similar purpose and nature, all being raw materials or components in the manufacture of finished products made of textile (fabrics). Furthermore they are sold in similar outlets, such as drapers and haberdasheries and target the same end users.

The same is not applicable for the remaining contested goods, namely household textile articles; towels of textile; shower curtains of textile or plastic; comforters; bed linen; cushion covers; table covers; table runners; table linen; sleeping bags [sheeting]; curtains of textile or plastic; curtains; furniture coverings of plastic; furniture coverings of textile; coverings for furniture; place mats, not of paper; quilts; travelling rugs [lap robes]; towels of textile; textile napkins; handkerchiefs of textile. The contested goods are finished goods of textile or plastic, while the opponent’s goods in Class 26 mentioned above are articles used to produce end products, usually of textile. Furthermore, there is no similarity between the contested goods and the rest of the opponent’s goods and services, as they serve completely different purposes: for instance the opponent’s articles of clothing are meant to be worn by people, for protection and/or fashion, whereas the contested goods are mainly for household purposes and interior decoration. Furthermore, the method of use of the contested goods and the opponent’s goods and services is different. They are not in competition with each other or complementary to each other. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, the contested goods are considered dissimilar to the opponent’s goods and services.

Contested goods in Class 25

Clothing; footwear; headgear; gloves [clothing] are identically contained in both lists of goods (including synonyms).

The contested belts [clothing] are included in the broader category of the opponent’s articles of clothing. It follows that these are identical.

Contested goods in Class 26

The contested badges for wear, not of precious metal are included in the broader category of the opponent’s badges. The goods are considered identical.

The contested elastic ribbons; ribbons of textile materials are included in the broader category of the opponent’s ribbons. The goods are considered identical.

Lace; embroidery are identically contained in both lists of goods.

The contested embroidery for garments is included in the broader category of the opponent’s embroidery. It follows that these are identical.

The contested hair twisters [hair accessories]; hair scrunchies; bows for the hair; hair bands; elastic for tying hair; lanyards [cords] for wear are included in the broad category of, or overlap with, the opponent’s hair ornaments. The goods are considered identical.

The contested brooches [clothing accessories] coincide with the opponent’s badges in their purpose, namely to serve for decoration, such as for clothing and the goods are in competition. They also share producer, end user and distribution channels. It follows that these are similar to a high degree.

The contested patches for clothing coincide in purpose with the opponent’s lace, namely to be used to decorate (ornament) clothing. They could, furthermore, be found in the same distribution channels and coincide in producer and end user. It follows that these are similar.  

The contested shoe laces are cords or strings drawn through holes or eyelets or around hooks to fasten shoes. They are, therefore, complementary to the opponent’s footwear in Class 25. Furthermore, they target the same end users and have the same distribution channels. They are, therefore, considered similar to a low degree.

The contested belt buckles; zippers; sequins; beads other than for making jewelry [haberdashery]; zipper pulls; buttons; buttons for clothing; hooks and eyes; needles share a similar purpose with the opponent’s embroidery, that is the mending and sewing of clothing and various textiles. They are also sold at the same outlets, i.e. in haberdashery shops and are directed at the same public. It follows that these are similar to a low degree.

Contested services in Class 35

The opponent’s services are, inter alia, the following retail services of some explicitly listed goods: retail services relating to the sale of clothing, headwear, neckwear, footwear, lingerie, jewellery, imitation jewellery, bags, belts. The contested retailing (including teleshopping channels), all relating to jewellery, costume jewellery, pins (jewellery), ornamental pins, pearls (jewellery), bracelets (jewellery), cuff links, key rings (trinkets or fobs), jewellery and costume jewellery, travelling bags, backpacks, bags, handbags, beach bags, bags for campers, net bags for shopping, shopping bags, hip bags, cosmetics containers, toiletry bags, school bags, school satchels, garment bags for travel, travelling sets (leatherware); carrying devices for animals (bags), clothing, footwear, headgear, belts (clothing), gloves (clothing) are identical to the opponent’s services listed above, either because the services are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in or overlap with the contested services.

The contested wholesaling (including teleshopping channels), and online and catalogue mail order trading, all relating to jewellery, costume jewellery, pins (jewellery), ornamental pins, pearls (jewellery), bracelets (jewellery), cuff links, key rings (trinkets or fobs), jewellery and costume jewellery are similar to the opponent’s retail services relating to the sale of jewellery in Class 35 since the goods that these services relate to are identical. Wholesaling is selling goods to other undertakings (retailers) which then sell the goods to end consumers; and the online and catalogue mail order trading are services which, as well as the opponent’s retailing, are services exclusively consisting of activities around the actual sale of goods, being via online or mail catalogue. The services in comparison have the same nature and purpose. Furthermore, they are complementary to each other (at least as far as the retail and wholesale services are concerned). Moreover, the provider of the contested services sometimes also provides retail services and thus, the commercial origin of these services can be the same. 

By the same token, the contested wholesaling (including teleshopping channels), and online and catalogue mail order trading, all relating to travelling bags, backpacks, bags, handbags, beach bags, bags for campers, net bags for shopping, shopping bags, hip bags, cosmetics containers, toiletry bags, school bags, school satchels, garment bags for travel, travelling sets (leatherware), carrying devices for animals (bags) are similar to the opponent’s retail services relating to the sale of bags in Class 35.

The above reasoning apply as well for the following services: the contested wholesaling (including teleshopping channels), and online and catalogue mail order trading, all relating to clothing, belts (clothing), gloves (clothing) which are similar to the opponent’s retail services relating to the sale of clothing in Class 35; the contested wholesaling (including teleshopping channels), and online and catalogue mail order trading, all relating to footwear which are similar to the opponent’s retail services relating to the sale of footwear; and the contested wholesaling (including teleshopping channels), and online and catalogue mail order trading, all relating to headgear which are similar to the opponent’s retail services relating to the sale of headwear.

The contested retailing (including teleshopping channels), all relating to cosmetics, deodorants and antiperspirants, soaps, perfumery, essential oils, hair lotions, hair dyes, hair spray, hair washing preparations, dentifrices, make-up removing preparations, body powders, not for medical purposes, nail polish, lipsticks, lipstick cases, bath salts, cosmetic preparations for the bath (perfumery), depilatories, sun-tanning preparations (cosmetics), tissues impregnated with cosmetic lotions, cotton sticks for cosmetic purposes, care products for babies, not for medical purposes, baby oils, baby powder, baby shampoo, baby lotions, cloths for cleaning babies, baby creams (not for medical purposes), air fresheners, air fragrancing preparations, potpourris (fragrances), joss sticks, scented wood, washing preparations, candles and wicks for lighting, perfumed candles, spectacles (optics), spectacle lenses, sunglasses, goggles for sports, ski goggles, spectacle frames, spectacle cases, credit cards, encoded customer cards, bags adapted for laptops, sleeves for laptops, sleeves for smartphones, leather sleeves for smartphones, covers for tablet computers, cases for tablet computers, leather sleeves for tablet computers, compact discs, DVDs, USB flash drives, computer software, application software, computer programs (downloadable software), electronic tags for goods, protective clothing for preventing injuries, shoes for protecting against accidents or injuries, protective helmets for sports, ski helmets, snowboard helmets, bicycle helmets, protective goggles for sports, clocks and watches, watch chains, watch straps, jewellery cases (caskets), cases for clock- and watchmaking, alarm clocks, precious metals and their alloys, paper, cardboard, printed matter, photographs, packaging materials of paper, plastic materials for packaging, cardboard articles, bookbinding materials, albums, calendars, note books, note pads, boxes for pens, stamps (seals), sealing wax, sealing stamps, stamp pads, writing paper, writing paper pads, drawer liners of paper, perfumed or not, books, newspapers, periodicals (magazines), office requisites, except furniture, boxes and bags of paper and/or cardboard for decorative packaging or presentation of fashion items and fashion accessories, cosmetics and household accessories, patterns for making clothes, passport holders, stickers, tailors' chalk, trunks, slings for carrying infants, vanity cases, not fitted, leather, imitations of leather, business card holders, credit card holders, key cases, briefcases (leatherware), attaché cases, dog leashes, tags for luggage, hat boxes of leather, leather laces, pocket wallets, purses, collars for animals, umbrellas, parasols, walking sticks, animal skins, hides, whips, harness, saddlery, clothing for animals, fabrics, woven material, textile goods (household goods), knitted fabric, towels, shower curtains of textile or plastic, bed covers (bed linen), bed linen, covers for cushions, tablemats, table runners, table linen, lining fabric for sleeping bags, curtain fabric, curtains of textile or plastic, drapes, linings, coverings of plastic for furniture, coverings of textile for furniture, loose covers for furniture, place mats, not of paper, quilts, travelling rugs (lap robes), towels of textile, napkins of textile, handkerchiefs of textile,  badges for wear, not of precious metal, patches for clothing, brooches (clothing accessories), belt buckles, hair accessories for twisting the hair, zip fasteners, hair ties, bows for the hair, spangles, pearls, other than for manufacturing jewellery (haberdashery), zipper pulls, buttons, buttons for clothing, hooks and eyes, pins and needles, elastic ribbons, ribbons of textile, ribbons for wearing in the hair, elastic ribbons for the hair, shoe laces, laces (cords) for clothing, lace, embroidery, embroidery for clothing are considered similar to the opponent’s retail services relating to the sale of clothing, headwear, neckwear, footwear, lingerie, jewellery, imitation jewellery, bags, belts. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

The contested wholesaling (including teleshopping channels), and online and catalogue mail order trading, all relating to cosmetics, deodorants and antiperspirants, soaps, perfumery, essential oils, hair lotions, hair dyes, hair spray, hair washing preparations, dentifrices, make-up removing preparations, body powders, not for medical purposes, nail polish, lipsticks, lipstick cases, bath salts, cosmetic preparations for the bath (perfumery), depilatories, sun-tanning preparations (cosmetics), tissues impregnated with cosmetic lotions, cotton sticks for cosmetic purposes, care products for babies, not for medical purposes, baby oils, baby powder, baby shampoo, baby lotions, cloths for cleaning babies, baby creams (not for medical purposes), air fresheners, air fragrancing preparations, potpourris (fragrances), joss sticks, scented wood, washing preparations, candles and wicks for lighting, perfumed candles, spectacles (optics), spectacle lenses, sunglasses, goggles for sports, ski goggles, spectacle frames, spectacle cases, credit cards, encoded customer cards, bags adapted for laptops, sleeves for laptops, sleeves for smartphones, leather sleeves for smartphones, covers for tablet computers, cases for tablet computers, leather sleeves for tablet computers, compact discs, DVDs, USB flash drives, computer software, application software, computer programs (downloadable software), electronic tags for goods, protective clothing for preventing injuries, shoes for protecting against accidents or injuries, protective helmets for sports, ski helmets, snowboard helmets, bicycle helmets, protective goggles for sports, clocks and watches, watch chains, watch straps, jewellery cases (caskets), cases for clock- and watchmaking, alarm clocks, precious metals and their alloys, paper, cardboard, printed matter, photographs, packaging materials of paper, plastic materials for packaging, cardboard articles, bookbinding materials, albums, calendars, note books, note pads, boxes for pens, stamps (seals), sealing wax, sealing stamps, stamp pads, writing paper, writing paper pads, drawer liners of paper, perfumed or not, books, newspapers, periodicals (magazines), office requisites, except furniture, boxes and bags of paper and/or cardboard for decorative packaging or presentation of fashion items and fashion accessories, cosmetics and household accessories, patterns for making clothes, passport holders, stickers, tailors' chalk, trunks, slings for carrying infants, vanity cases, not fitted, leather, imitations of leather, business card holders, credit card holders, key cases, briefcases (leatherware), attaché cases, dog leashes,tags for luggage, hat boxes of leather, leather laces, pocket wallets, purses, collars for animals, umbrellas, parasols, walking sticks, animal skins, hides, whips, harness, saddlery, clothing for animals, fabrics, woven material, textile goods (household goods), knitted fabric, towels, shower curtains of textile or plastic, bed covers (bed linen), bed linen, covers for cushions, tablemats, table runners, table linen, lining fabric for sleeping bags, curtain fabric, curtains of textile or plastic, drapes, linings, coverings of plastic for furniture, coverings of textile for furniture, loose covers for furniture, place mats, not of paper, quilts, travelling rugs (lap robes), towels of textile, napkins of textile, handkerchiefs of textile, badges for wear, not of precious metal, patches for clothing, brooches (clothing accessories), belt buckles, hair accessories for twisting the hair, zip fasteners, hair ties, bows for the hair, spangles, pearls, other than for manufacturing jewellery (haberdashery), zipper pulls, buttons, buttons for clothing, hooks and eyes, pins and needles, elastic ribbons, ribbons of textile, ribbons for wearing in the hair, elastic ribbons for the hair, shoe laces, laces (cords) for clothing, lace, embroidery, embroidery for clothing are considered similar to a low degree to the opponent’s retail services relating to the sale of clothing, headwear, neckwear, footwear, lingerie, jewellery, imitation jewellery, bags, belts. These services have a similar nature and they coincide in purpose insofar as they are activities rendered around the sales of goods. Moreover, the provider of the contested services sometimes also provides retail services and thus, the commercial origin of these services can be the same.

The contested auctioneering provided on the internet consists of public sales at which goods are sold on Internet to the highest bidder. Jewellery is a typical example of items being sold in auctions. Therefore, the contested services and the opponent’s retail services relating to the sale of jewellery have a similar purpose and they can be of interest to the same public. Moreover, there are certain points of sale where both services are being offered, for instance on online auction sites. These are, therefore, considered to be similar.

The remaining contested services, namely demonstration of goods; loyalty, incentive and bonus program services; operation of an online customer club for business, sales promotion and/or advertising purposes; product demonstrations in shop windows and television sales programmes featuring live models; presentation of goods on communication media, for retail purposes; demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services are services which belong to the categories of advertising and promotional services and which 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.

These services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. These services are not similar to the opponent’s services in Class 35, as the services are usually not originating from the same provider and are neither in competition, nor complementary. Furthermore, there is no similarity with the opponent’s goods in Classes 3, 4, 9, 14, 16, 18, 25 or 26, as they differ with the contested services in nature, purpose and method of use. Furthermore, they do not share the same origin and are neither in competition nor complementary. It follows that the contested services are dissimilar to the opponent’s goods and services.  

Contested services in Class 45

The contested rental of clothing; personal shopper services; preparation of customized gift boxes; personal gift selection for others are personal and social services rendered by others to meet the needs of individuals (such as to receive clothing for temporary use against a price; assistance in purchasing goods or preparing/selecting gifts). Although these may have as a subject some of the opponent’s goods (such as articles of clothing), this is not enough for finding similarity. The contested services are usually provided by different providers than the opponent’s goods and services, such as personal shopper or clothing rental entities, or entities specialised in selecting, shopping and delivering goods and gifts for others, which are not the providers of the opponent’s goods and services. Furthermore, the contested services and the opponent’s services have different, nature, purpose and method of use. They are neither complementary, nor necessarily in competition. Therefore, the contested services are considered 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 and similar to different degrees are directed at the public at large, but also at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average (e.g. it may be higher than average for some of the goods in Class 14, such as jewellery), depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

Earlier marks 1 and 2:

ACCESSORIZE Earlier mark 3:	MORE & CO. ACCESSORIZE
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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 ‘ACCESSORIZE’ is not meaningful for parts of the relevant public, such as for the Bulgarian, Estonian and Hungarian-speaking parts of the relevant public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the abovementioned parts of the relevant public.

The earlier marks 1 and 2 are word marks, consisting of the element ‘ACCESSORIZE’, which has no meaning for the relevant parts of the public and is, therefore, distinctive.

The earlier mark 3 is a figurative mark, consisting of the element ‘Accessorize’, written in stylized, title case letters, where the dot of the letter ‘i’ is substituted with a depiction of a crown, which therefore serves to complete and decorate the letter string; below the element ‘Accessorize’ is depicted a curving decorative line. A reference is made to the conclusions about the element ‘ACCESSORIZE’ above, which are equally applicable for the element ‘Accessorize’ of earlier mark 3. It is, furthermore, noted that the element of a crown is often used in trade as to indicate a supreme quality of goods/services being offered and it also serves as a decorative complement of the letter string in the given mark. It is, therefore, considered that this element is weak for the relevant goods and services. Furthermore, the curving line depicted below the element ‘Accessorize’ is of a purely decorative nature and therefore its distinctiveness is rather limited.

Furthermore, when signs consist of both verbal and figurative components (which is the case of the earlier mark 3), in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The earlier mark 3 has no elements that could be considered clearly more dominant than other elements.

The contested sign is a word mark, consisting of the elements ‘MORE’, ‘&’, ‘CO.’ and ‘ACCESSORIZE’. It is noted that the elements ‘MORE’, ‘CO.’ and ‘ACCESSORIZE’ have no meaning for the relevant parts of the public and are, therefore, distinctive. The element ‘&’ will be perceived by the relevant parts of the public as the ampersand, which represents the conjunction ‘and’. Even though, the relevant parts of the public are familiar with the ampersand, at the case at issue it does not connect words that are meaningful for these parts of the public and therefore it could not be considered that it conveys a particular concept on its own. The element is considered distinctive.

Visually, the signs coincide in the element ‘ACCESSORIZE’, present as the sole verbal and distinctive element in all the earlier marks and as a separate and distinctive element in the contested sign. The signs differ in the crown device and the curving line (being of limited distinctiveness), the typeface of the earlier mark 3 and in the elements ‘MORE’, ‘&’ and ‘CO.’ of the contested sign.

Considering that the signs coincide in the sole verbal element of the earlier marks, which is a separate recognizable element in the contested sign and taking into account the distinctiveness of the elements assessed above, the signs in comparison are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‘ACCESSORIZE’, present in all signs. The pronunciation differs in the sound of the elements ‘MORE’, ‘&’ and ‘CO.’ (pronounced in accordance to the language specifics of the relevant parts of the public) of the contested sign.

Considering that the signs coincide in the sound of the sole verbal element of the earlier marks, which is a separate and distinctive element in the contested sign, the signs in comparison are considered aurally similar to an average degree.

Conceptually, neither of the earlier marks 1 and 2 and the contested sign has a meaning for the relevant parts of the public. Even though the ampersand in the contested sign will be interpreted as such, as noted above, it does not add any particular meaning in the case at issue. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As far as the earlier mark 3 is concerned, the relevant parts of the public will perceive the crown (being of a limited distinctiveness) as such.  Since the contested 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.

 

4. Distinctiveness of the earlier marks

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 claimed that the earlier trade marks enjoy reputation but did not file any evidence in order to prove such a claim.

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 goods and services in question from the perspective of the relevant parts of the public. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some elements of limited distinctiveness in earlier mark 3 as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As has been concluded above, the contested goods and services were found partly identical, partly similar to various degrees and partly dissimilar to the goods and services of the earlier marks. The degree of attention may vary from average to higher than average when choosing the relevant goods and services.

It is taken into account that 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, the earlier marks are considered to enjoy a normal degree of distinctiveness. It has also been established above that the signs are visually and aurally similar to an average degree, due to the coincidences in the element ‘ACCESSORIZE’ being the sole verbal element in the earlier marks and playing independent and distinctive role in the contested sign. It is noted that the additional figurative elements of the earlier mark 3 are decorative elements and have a limited distinctiveness. Account is taken of the fact that in a figurative sign, the verbal element rather than the figurative one is the one that is likely to have better impact on the attention of the consumer. Thus the consumer’s attention would not be diverted from the letter string ‘ACCESSORIZE’ as such even when it comes to the earlier mark 3.  

Therefore, due to the shared element ‘ACCESSORIZE’, present as separate, recognizable element in the contested sign, it is likely that the relevant public may consider the contested sign as a new line of goods and services marked with the opponent’s sign and configured in a different way. The particular depiction of the element ‘ACCESSORIZE’ (separated from the rest of the elements by a dot, as well as with a letter-spacing) favours such a conclusion, as it makes the element clearly perceptible on its own and not only as part of a letter sequence.

Taking into account the visual and aural similarity between the signs, as explained above, it is concluded that the relevant parts of the public may believe that the goods and services found to be similar, including to a low degree come from the same undertaking or economically linked undertakings even when the level of attention is higher than average.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian, Estonian and Hungarian-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations. 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 and services found to be identical or similar to various degrees.  

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.

Since the opposition was partially successful on the ground of Article 8(1)(b) EUTMR, the Opposition Division will further proceed with the examination on the other ground invoked by the opponents, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims that its earlier rights on which the opposition is based have a reputation in the European Union (including the United Kingdom).

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.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 20/10/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 25/02/2017.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 will 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

Judit NÉMETH

Irina SOTIROVA

Erkki MÜNTER

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.