OPPOSITION No B 2 704 800

Mª Luisa Cristina Becerra Guibert, C/ del Edil Marina Olcina, 1, Playa San Juan, 03540 Alicante, Spain; and Calzados Nuevo Milenio, S.L., Pol.Ind. Tejerias, C/Los Huertos, s/n., Calahorra, Spain (opponents), represented by AB Asesores, Calle Bravo Murillo, 219 – 1º B, 28020 Madrid, Spain (professional representative)

a g a i n s t

Mohammed Ibrahim Al-Shamasy Trading Est., P.O. Box 5067, Riyadh 11422, Saudi Arabia (applicant), represented by Bourgeois Rezac Mignon, 17, boulevard Malesherbes, 75008 Paris, France (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 704 800 is partly upheld, namely for the following    contested goods in Classes 18, 24 and 25:

Class 18: Leather wallets, travelling bags made of leather, purses made of leather; handbags made of leather, suitcase made of leather, briefcases made of leather; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 24: Textiles.

Class 25 (in its entirety): Clothing, footwear, headgear.

2.        European Union trade mark application No 14 907 257 is rejected for all the above goods. It may proceed for the remaining goods in Classes 3 (in its entirety), 18 and 24.

3.        Each party bears its own costs.

REASONS:

The opponents filed an opposition against all the goods (in Classes 3, 18, 24 and 25) of European Union trade mark application No 14 907 257 (figurative mark:
“”). The opposition is based on, inter alia, European Union trade mark registration No 14 711 246 (word mark: “Victoria”) and Spanish trade mark registration No 1 639 192 (figurative mark: “”).The opponents invoked Article 8(1)(b) EUTMR for both marks and, in addition, Article 8(5) EUTMR for Spanish trade mark registration No 1 639 192.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 711 246 and Spanish trade mark registration No 1 639 192.

1. The goods

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

European Union trade mark registration No 14 711 246

Class 18: Handbags, rucksacks; Travelling sets [leatherware]; Attaché cases; Trunks and travelling bags; Umbrellas and parasols; Leather and his/her imitations; Walking sticks, whips, harness and saddlery.

Class 25: Footwear.

Class 35: Retailing in shops or via global computer networks of footwear; Advertising; Business management; Business administration; Business assistance relating to franchising; Advisory services (Business -) relating to the establishment of franchises.

Spanish trade mark registration No 1 639 192

Class 25: Clothing, footwear (except for orthopaedic), headgear; all of them among those included in this class.

The contested goods in Classes 3, 18, 24 and 25 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.

Class 18: Leather wallets, travelling bags made of leather, purses made of leather; handbags made of leather, suitcase made of leather, briefcases made of leather, animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers.

Class 25: Clothing, footwear, headgear.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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

All the contested goods are considered dissimilar to those of the earlier trade marks in Classes 18 and 25. Their nature and main purpose are different. The main purpose of clothing is to dress the human body, whereas the main purpose of the goods in Class 3, such as soaps; perfumery, essential oils, cosmetics, is to impart scent to the body, stationery, etc. They do not have the same distribution channels and are neither in competition, nor complementary. The same reasoning applies to goods such as travelling bags in Class 18, which are for carrying things when travelling. Even though some fashion designers nowadays also sell perfumes and travel accessories under their marks, this is not the rule; it tends to apply only to (commercially) successful designers. This is even more the case for the other remaining contested goods, bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; hair lotions; dentifrices, which do not have any similarities to the goods and services of the earlier trade marks.

Contested goods in Class 18

Trunks and travelling bags; umbrellas and parasols; Walking sticks, whips, harness and saddlery are identically contained in both lists of goods.

The contested Leather wallets, purses made of leather overlap with the opponent’s Handbags. Therefore, they are identical.

The contested travelling bags made of leather are included in the broad category of the opponent’s travelling bags. Therefore, they are identical.

The contested handbags made of leather are included in the broad category of the opponent’s handbags. Therefore, they are identical.

The contested suitcase made of leather is included in the broad category of the opponent’s Travelling sets [leatherware]. Therefore, they are identical.

The contested briefcases made of leather are included in the broad category of, or overlap with, the opponent’s Attaché cases. Therefore, they are identical.

The contested animal skins, hides refer to the skins of various kinds of animals. These are raw materials. The fact that one product is used for manufacturing another (for example, goods of leather and/or imitations of leather) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods in Class 18, which are finished products. Therefore, these goods are dissimilar to the goods and services of the earlier trade marks.

Contested goods in Class 24

The contested Textiles have the same purpose and public as the opponent´s goods in Class 18 Leather and his/her imitations. Furthermore, they are in competition with each other. Therefore, they are similar.

The main point of contact between textile goods, not included in other classes; bed covers; table covers in Class 24 and clothing in Class 25 is that they are made of textile materials. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, for protection and/or fashion, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, textile goods are considered dissimilar to clothing. This is even more the case for the other goods and services of the earlier trade marks, which do not have any similarities to any of the contested goods for the abovementioned reasons.

Contested goods in Class 25

Clothing, footwear, headgear are identically contained in both lists of goods.

2. Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is considered average.

3. The signs

Victoria European Union trade mark registration No 14 711 246 Spanish trade mark registration No 1 639 192
Earlier trade mark(s)	Contested sign

The relevant territory is the European Union incl. 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 European Union trade mark is a word mark, which is protected in all different typefaces. The earlier Spanish figurative trade mark is the (same) word ‘VICTORIA’, written in a stylised typeface with a thick underlining, beginning under the last letter, ‘A’, and going back below the word to its first letter.

The contested sign is a figurative mark with a square background, comprising a large letter ‘V’ at the top and the word ‘VICTORIA’ in smaller letters below it.

The element ‘VICTORIA’ (including the letter ‘V’ as its first letter) of the contested sign will be understood as a female forename. In Spain, it will also be understood as ‘victory’. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Neither the earlier Spanish trade mark nor the contested sign has any elements that could be considered clearly more dominant than other elements.

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 have the word ‘Victoria’ in common, although they are depicted slightly differently. The large letter ‘V’ in the contested sign is repeated as the first letter of the word ‘VICTORIA’ below it. Taking into account the identical words ‘Victoria’ and the slightly different figurative elements, the signs are visually similar to an above average degree.

Aurally, the figurative elements will not be taken into account. The letter ‘V’ standing by itself is only part of the contested sign. If it is pronounced, the signs are aurally highly similar because they have the word ‘Victoria’ in common. If it is not pronounced, the signs are aurally identical.

Conceptually, the letter ‘V’ in the contested sign will be recognised within the context of the following word, ‘Victoria’, and not as a separate letter. Since ‘Victoria’ has the meaning(s) cited above, the signs are conceptually identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark(s)

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

According to the opponent, the earlier Spanish mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical, partly similar and partly dissimilar. The signs are visually similar to an above average degree, aurally highly similar or identical and conceptually identical.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the visual, aural and conceptual identities/similarities between the signs, the average degree of distinctiveness of the earlier trade mark and the identity and similarity between the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.

The applicant has not submitted any observations in reply. Therefore, its arguments cannot be examined.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing Spanish mark in relation to dissimilar goods, as the similarity of goods is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier Spanish mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• Spanish trade mark registration No 97 941 (figurative mark:
  “”) for goods in Class 25;
• Spanish trade mark registration No 437 469 (figurative mark:
  “”) for goods in Class 25;
• Spanish trade mark registration No 680 000 (figurative mark:
  “”) for goods in Class 25;
• Spanish trade mark registration No 1 117 769 (figurative mark:
  “”) for goods in Class 25;
• Spanish trade mark registration No 1 117 770 (figurative mark:
  “”) for goods in Class 25;
• Spanish trade mark registration No 1 189 894 (figurative mark:
  “”) for goods in Class 25.

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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 shall 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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

•        The signs must be either identical or similar.

•        The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

•        Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08, & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

•        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

•        it is detrimental to the repute of the earlier mark;

•        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T 60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C 375/97, Chevy, EU:C:1999:408, § 30).

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

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade marks, the opposition is considered not well founded under Article 8(5) EUTMR.

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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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Magnus ABRAMSSON

Peter QUAY

Julia SCHRADER

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.