OPPOSITION No B 2 362 948

Lala Berlin GmbH, Wattstrasse 11-13, 13355 Berlin, Germany (opponent), represented by Patton Boggs Squire (US) LLP, Taunusanlage 17, 60325 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Eliza Manowska-Rejent trading as Eliza Manowska-Rejent, Rostki-Piotrowice 6A, 07-320 Małkinia Górna, Poland (applicant), represented by Katarzyna Izabela Kręźlewicz, Al. Solidarności 147 lok nr. 3, 00-898 Warszawa, Poland (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 362 948 is upheld for all the contested goods, namely 

Class 25: Women's sportswear.

2.        European Union trade mark application No 12 512 158 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition initially against all the goods and services of European Union trade mark application No 12 512 158. However, following the limitation of the applicant, on 18/04/2017 the opponent restricted the opposition to the goods in Class 25 only. The opposition is based on, inter alia, European Union trade mark registration No 10 815 901. The opponent invoked Article 8(1)(b) EUTMR.

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 10 815 901.

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

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

Class 24: Woven fabrics and textile goods, included in class 24, in particular handkerchiefs and hand towels; Bath linen (except clothing), household, bed and table linen, wall hangings of textile, upholstery fabrics.

Class 25: Clothing for men, women and children; Stockings; Socks; Headgear; Underwear; Nightwear; Swimwear; Bathrobes; Belts; Belts of leather; Shawls; Accessories, Namely headscarves, Neckerchiefs, Shoulder wraps; Ties; Gloves; Shoes.

The contested goods are the following:

Class 25: Women's sportswear.

The contested women's sportswear is included in the broad category of the opponent’s clothing for women. Therefore, they are identical.

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 are directed at the public at large.

The degree of attention is average.

3. The signs

Lala Berlin
Earlier trade mark	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. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs contain the elements which have meanings in Polish. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

The earlier mark is a word mark consisting of the words ‘Lala Berlin’. The contested sign is a figurative mark consisting of the words ‘WARSZAWSKA LALA’ depicted in close to standard black typeface and a round black and white figurative element.

However, it should be borne in mind that, when a sign consists 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).

Furthermore, the figurative element of the contested sign contains some negligible elements, such as crossed items positioned centrally and surrounded by leaves and words ‘PLNY’ and ‘LALA’, which are barely perceptible. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. The relevant public will rather perceive the figurative element in its entirety, disregarding the various elements inside. Consequently the details of the figurative element of the contested sign will not be taken into consideration.

The element ‘LALA’ as such may be associated with several meanings. However, since it appears together with the adjective ‘WARSZAWSKA’ meaning ‘from Warsaw’, it will be understood by the Polish-speaking public as referring to a doll or a pretty girl.

The word ‘WARSZAWSKA’ of the contested sign is a Polish adjective meaning ‘from Warsaw’. This element and the word ‘BERLIN’ of the earlier mark may be perceived as references to the origin of the goods. Therefore, their distinctiveness is limited while the element ‘LALA’ has no direct meaning in relation to the relevant goods and its degree of distinctiveness is normal.

The signs have no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the word ‘LALA’. However, they differ in the word ‘BERLIN’ of the earlier mark and the word ‘WARSZAWSKA’ of the contested sign. Furthermore, the signs differ in the figurative element of the contested sign with barely visible words. As explained above, the differing elements will have less impact on the consumers. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛LALA’, present in both signs. The pronunciation differs in the sound of the words with limited distinctiveness, namely ‛BERLIN’ of the earlier mark and ‘WARSZAWSKA’ of the contested sign. Therefore, the signs are similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs contain the meaningful word ‘LALA’, they will be associated with a similar meaning. The remaining meaningful verbal elements, ‘BERLIN’ of the earlier mark and ‘WARSZAWSKA’ of the contested sign, have a certain conceptual influence. In particular, the adjective ‘WARSZAWSKA’ qualifies the word ‘LALA’, indicating ‘WARSAW’ as the place of origin. Although the word ‘BERLIN’ is not an adjective, since it names the capital of Germany, it may also be perceived as an indication of origin. For these reasons, the influence of the words ‘WARSZAWSKA’ and ‘BERLIN’ is limited. Therefore, the signs are conceptually similar at least to an average degree.

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 direct 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, despite the presence in the mark of an element with limited distinctiveness, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical and the signs are similar at least to an average degree as they coincide in their most memorable element ‘LALA’.

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).

In view of the above, there is a likelihood of confusion because the differences between the signs will have less impact on the consumers.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the word ‘LALA’ is non-distinctive given that there are many trade marks that include this word. In support of its argument the applicant refers to some EU trade mark registrations.

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 word ‘LALA’. Under these circumstances, the applicant’s claims must be set aside.

Likewise, the applicant claims that the opponent has not received the registration of the European word mark ‘LALA’. However, without further details and explanations concerning the relevance of this information in the present case this argument cannot be addressed.

Furthermore, the applicant argues that it owes a family of marks with the element ‘PLNY’ to which the contested sign belongs and that the consumers will be aware of this fact. In support of this argument the applicant filed a list of trade mark registrations with the element ‘PLNY’, one of them being ‘PLNY LALA’. However, this information is irrelevant for the present case. As explained above, the element ‘PLNY’ is negligible in the contested sign. Furthermore, the examination of the opposition in principle shall be restricted to the signs in conflict and the sign ‘PLNY LALA’ is not a subject of the present opposition. Finally, the opponent’s mark, which was filed on 18/04/2012, is earlier than the applicant’s ‘PLNY LALA’ mark which was filed on 17/10/2013.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 European Union trade mark registration No 10 815 901. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 10 815 901 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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.

The Opposition Division

Anna BAKALARZ

Justyna GBYL

Adriana VAN ROODEN

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.