OPPOSITION DIVISION
OPPOSITION No B 2 801 424
Salvatore Ferragamo S.P.A., Via dei Tornabuoni, 2, 50123 Firenze, Italy (opponent),
represented by Società Italiana Brevetti S.P.A., Corso dei Tintori, 25, 50122
Firenze, Italy (professional representative)
a g a i n s t
Gudula Stegmann, Huegelstrasse 9, 61440 Oberursel, Germany (applicant).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 801 424 is upheld for all the contested goods.
2. European Union trade mark application No 15 486 954 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 486 954 ‘Nattimo’. The opposition is based on international trade
mark registration No 1 037 583 ‘ATTIMO’ designating the European Union. The
opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
Decision on Opposition No B 2 801 424 page: 2 of 5
a) The goods
The goods on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use;
cleaning, polishing, scouring and abrasive preparations; soaps;
perfumery, essential oils, cosmetics, hair lotions; dentifrices.
The contested goods are, after limitation, the following:
Class 3: Non-medicated body care preparations; Lotions for face and body
care; Preparations for the care of the body.
Preliminary remark
The opposition was based on ‘all goods’ for which the earlier mark is registered. The
opponent filed a Declaration under Article 28(8) EUTMR on 19/09/2016, which was
accepted on 08/02/2017. The contested mark was filed on 29/05/2016, i.e. before the
amendment of the register. Therefore, applying Article 28(9) EUTMR the goods
added as a result of the declaration that go beyond the literal meaning of the
originally registered goods and services are disregarded.
The contested non-medicated body care preparations; preparations for the care of
the body include, as broader categories the opponent’s cosmetics. Since the
Opposition Division cannot dissect ex officio the broad categories of the contested
goods, they are considered identical to the opponent’s goods.
The contested lotions for face and body care are included in the broad category of
the opponent’s cosmetics. Therefore, they are identical.
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 are directed at the public at
large. The degree of attention is considered to be average due to the nature of the
goods.
c) The signs
ATTIMO Nattimo
Earlier trade mark Contested sign
The relevant territory is the European Union.
Decision on Opposition No B 2 801 424 page: 3 of 5
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). This applies by analogy to international registrations
designating the European Union. Therefore, a likelihood of confusion for only part of
the relevant public of the European Union is sufficient to reject the contested
application.
The letter string ATTIMO is present in both marks, and is meaningful in certain
territories, for example in those countries where Italian is understood. Consequently,
the Opposition Division finds it appropriate to focus the comparison of the signs on
the Italian-speaking part of the public.
The earlier mark ATTIMO will be understood as ‘a moment’ (08/11/2017, extracted
from Collins Italian-English Dictionary on www.collinsdictionary.com) by the relevant
Italian speaking public. In contrast with the applicant’s argument, as it is not
descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The contested mark NATTIMO as such has no meaning in Italian. However, it cannot
be excluded, as claimed by the applicant, that part of the public will perceive it as a
misspelling of a colloquial words (U)N ATTIMO, with the meaning of ‘(in) a moment’
(08/11/2017, extracted from Collins Italian-English Dictionary on
www.collinsdictionary.com).
Visually and aurally, the signs coincide in the letter string ATTIMO. However, they
differ in the first letter N, and the sound of that letter when pronounced, in the
contested mark.
Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived as referring to a
similar concept of a ‘moment’ by part of the public, the signs are conceptually similar
to an average degree for that public. For the remaining public that perceives no
meaning in the contested mark, 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.
Decision on Opposition No B 2 801 424 page: 4 of 5
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The goods have been found identical. The visual, aural and conceptual aspects have
been examined.
The earlier sign and the contested sign have been found to be similar to the extent
that they have the letters ATTIMO in common, the earlier mark being incorporated in
its entirety in the contested sign. The small difference of only one letter between the
signs, even though placed at the beginning of the contested sign, cannot outweigh
the prevailing coinciding parts perceived by the public.
Moreover, it should be taken into account that the average consumer only rarely has
the chance to make a direct comparison between the different marks and the
consumers may be easily confused because they will have to rely on the imperfect
picture of the marks that they have kept in their mind (22/06/1999, C-342/97, Lloyd
Schuhfabrik, EU:C:1999:323, § 26).
It is considered that the established similarities between the signs are sufficient to
cause at least part of the public to believe that the conflicting goods which are
identical come from the same or economically liked undertakings. The relevant public
could therefore believe that the contested sign is a modification of the earlier mark
based on the same core element.
Considering all the above, there is a likelihood of confusion on the part of the Italian-
speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s international
trade mark registration No 1 037 583 designating the European Union. It follows that
the contested trade mark must be rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
Decision on Opposition No B 2 801 424 page: 5 of 5
The Opposition Division
José Antonio GARRIDO
OTAOLA
Erkki Münter Marine DARTEYRE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.