OPPOSITION No B 2 712 720

Dedimod SL, C/ Ciudad de Frias 24-32, Nave 8 Pol. Ind. Villaverde, 28021 Madrid, Spain (opponent), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69 -5° Of. 510, 28013 Madrid, Spain (professional representative)

a g a i n s t

Luca Marchesi, Via Melchiorre Gioia 47, Milan, Italy (applicant).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 712 720 is partially upheld, namely for the following contested services:

Class 35: Online retail store services relating to clothing.

Class 45: Providing fashion information.

2.        European Union trade mark application No 15 221 021 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 221 021. The opposition is based on Spanish trade mark registration No 3 568 297. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 3: Preparations to whiten and other substances to clean clothes; preparations to clean, polish, degrease, and scrape; soaps; perfumes, essential oils, cosmetics, hair lotion, toothpastes.

Class 9: Scientific, nautical, geodesic, photographic, cinematographic, optical, weighing, measurement, signalling, control (inspection), rescue, and teaching devices and instruments; driving, distribution, transformation, accumulation, and regulation or control of electricity devices and instruments; devices for recording, broadcasting, or playing back sound or images; magnetic recording mediums, acoustic discs; compact discs, DVDs, and other digital recording mediums; mechanisms for vending machines; cash registers, calculating machines, data processing equipment, computers; software; fire extinguishers.

Class 14: Precious metals and their alloys; jewellery, imitation jewellery, precious stones; watches and time devices.

Class 18: Leather and imitation leather; animal skins; chests and suitcases; umbrellas and parasols; walking sticks; riding crops and saddle items.

Class 25: Clothing, footwear, hats.

Class 35: Franchise issuing services related to providing assistance in exploiting commercial enterprises; advertising services; mediation services in commercial enterprises; assistance and advice in the management of companies and commercial and industrial enterprises; promotion services for third party sales; commercial representation services, compilation of ads for use as a website and compilation of directories for publication in worldwide computer networks, data management services of computer files; dissemination of advertising for third parties through global communication networks, information search services in computer files for third parties; advisory services related to customer service; wholesale, retail, and online sales services for textile products, decorations, imitation jewellery, jewellery, watches, glasses, perfumes cosmetics, essential oils, clothing, footwear, hats, bags, suitcases, mobile phone cases, handbags, belts, purses, wallets, umbrellas, clothing accessories.

The contested services are the following:

Class 35: Online retail store services relating to clothing.

Class 45: On-line social networking services; Providing fashion information.

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 (‘Canon’ criteria).

Contested services in Class 35

The contested online retail store services relating to clothing are identical to the opponent’s retail and online sales services for clothing.

Contested services in Class 45

The contested providing fashion information is similar to a low degree to the opponent’s retail and online sales services for clothing. These services are likely to be rendered by the same companies to the same consumers, since it is common for large clothing retailers to also provide fashion information.

The contested on-line social networking services are services rendered to individuals to enable them to build social networks or develop social relationships with other people who share similar personal or career interests, activities, backgrounds or real-life connections. Social networking services may be for socialising with existing friends, for helping users to find specific information or resources, or for interpersonal communication linked to careers and employment. These services are obviously not similar to the opponent’s goods in Classes 3, 9, 14, 18 and 25, as they do not coincide in any of the relevant Canon criteria. They differ in their natures, purposes, methods of use and manufacturers/providers, and they are neither in competition nor complementary. Likewise, they are not similar to the opponent’s services in Class 35, which include advertising services (providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or reinforcing a client’s position in the market and acquiring competitive advantage through publicity), services intended to help in the running (including day-to-day operations) and management of a commercial undertaking, and retail and wholesale services. The services at issue differ in their natures, purposes and providers, and they are neither complementary nor in competition.

Therefore, the contested on-line social networking services are not similar 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 services found to be identical or similar to a low degree are directed at the public at large, whose degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign contains the word ‘utfit’ in bold lower case letters. It is meaningless for the relevant public and, therefore, distinctive to an average degree. The word ‘stores’ is underneath the letters ‘fit’ in smaller, italic, characters. For part of the relevant public, this word is meaningless, whereas, for another part of the public, it could evoke the Spanish word ‘estores’, which means ‘blinds’. In any case, this word is distinctive for the relevant services. At the left-hand side of the sign is depicted a stamp containing the verbal elements ‘OUTFIT’ and, in smaller letters, ‘STORE’, both of which are distinctive. A black crown is depicted in the centre of the stamp. This figurative element, as well as being ornamental, is also weak due to its laudatory character. The word ‘utfit’ is the dominant element of the sign by virtue of its central position, large size and bold typeface.

The contested sign consists of a square black background containing the word ‘OUTFIT’ written in white upper case letters, preceded by a figurative element depicted in a white circle and depicting a stylised high-heeled shoe. The word ‘OUTFIT’ is meaningless and, therefore, distinctive to an average degree. The black background is non-distinctive, as it is a basic ornamental element. In relation to the relevant services (online retail store services relating to clothing, providing fashion information), the figurative element depicting a high-heeled shoe is weak, since it indicates that the services relate to footwear (the fashion industry includes footwear and the retail of clothing is very often accompanied by the retail of footwear, as these are complementary items). In addition, when signs consist of both verbal and figurative components, 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).

Visually, the signs coincide in the distinctive element ‘OUTFIT’, which constitutes the verbal element of the contested sign and is one of the verbal elements depicted in the stamp in the earlier sign. Even though this element is not the dominant element of the sign, it is nonetheless clearly visible within the stamp and visually more eye-catching than the following element, ‘STORE’, which is written in smaller letters. Moreover, the dominant element ‘UTFIT’ of the earlier sign and the verbal element ‘OUTFIT’ of the contested sign coincide in the five letters ‘UTFIT’ and differ only in the additional first letter, ‘O’, of the contested sign. The signs further differ in the their additional figurative elements, as described above, and in the additional verbal elements ‘STORE’ and ‘STORES’ of the earlier sign. However, as explained above, these additional verbal elements are secondary due to their position and size, and the figurative elements of the signs are essentially non-distinctive or weak. Therefore, it is concluded that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‛OUTFIT’, present identically in both signs. Even though this element is not the dominant element of the earlier sign, it is nevertheless clearly visible in the stamp and thus may be pronounced. In any case, the dominant element of the earlier sign, ‘UTFIT’, and the verbal element of the contested sign, ‘OUTFIT’, are aurally similar to a high degree, as they coincide in the sounds of the letters ‘UTFIT’, and the additional first letter, ‘O’, of the contested sign does not introduce a significant phonetic difference. The signs further differ in the additional verbal elements of the earlier sign. Taking into account the above considerations regarding the distinctive and dominant elements of the signs, the signs are considered aurally similar to a high degree.

Conceptually, the earlier sign contains a depiction of a stamp with a crown in its centre. For part of the public, the verbal elements of the earlier sign have no meaning, whereas, for another part of the public, the words ‘STORES’ and ‘STORE’ could be perceived as referring to ‘blinds’. The contested sign contains a depiction of a stylised high-heeled shoe and its verbal element has no meaning. As the signs will be associated with different concepts, they are not conceptually similar. However, the conceptual differences resulting from the figurative elements of the signs are of little relevance, given that these elements are weak.

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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).

The services are partly identical and partly similar to a low degree. The distinctiveness of the earlier mark is normal and the degree of attention of the public is average.

The signs are visually similar to an average degree and aurally similar to a high degree.

Considering all the above, the Opposition Division finds that the similarities resulting from the distinctive elements of the signs clearly outweigh the differences, which result mainly from secondary or weak/non-distinctive elements. Therefore, there is a likelihood of confusion on the part of the public and, consequently, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

In his observations, the applicant argues that there are many trade marks in the Spanish register that include the element ‘OUTFIT’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘OUTFIT’. Under these circumstances, the applicant’s claims must be set aside.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark. This applies to the services that are similar to a low degree, given the significant similarities between the signs.

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.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna ZIÓŁKOWSKA

Frédérique SULPICE

Pedro JURADO MONTEJANO

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.