OPPOSITION No B 676 553

Advance Magazine Publishers Inc., One World Trade Center, 10007 New York, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Ángel 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Lighthouse Trademarks, S.L., Mestre Nicolau 21, 08021 Barcelona, Spain (applicant), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña 120, 08008 Barcelona, Spain (professional representative).

On 14/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 676 553 is partially upheld, namely for the following contested goods:

Class 25: Corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks; clothing and sporting articles for men, women and children (not included in other classes), swimsuits.

2. Community trade mark application No 3 064 219 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 3 064 219. The opposition is based on Community trade mark registrations No 183 756 and No 8 531 436. The opponent invoked Article 8(1)(b) CTMR.

PRELIMINARY REMARK

On 03/02/2004, the opponent filed an opposition based on all the goods and services of earlier Community trade mark application No 183 756. As a result of a request for division of earlier Community trade mark application No 183 756 on 05/08/2009, Community trade mark application No 8 531 436 for Class 14 was created. Its filing date is that of the original application (Article 44 CTMR).

Therefore, since the opposition was based on all the goods and services, the examination of the opposition will continue with Community trade mark registrations No 183 756 and No 8 531 436, since both of them derive from the goods and services of earlier Community trade mark application No 183 756.

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

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:

1. Community trade mark registration No 183 756 (earlier mark 1)

Class 9: Software; CD-ROMs; audio and videocassettes; electronic, optical and digital publications; optical apparatus and products including eyewear- eyeglasses and sunglasses.

Class 16: Printed matter (magazines, newsletters, and books; computer programs); paper products (posters, paper patterns).

Class 25: Clothing.

Class 41: Electronic information and entertainment services accessible via global or non-global computer network.

2. Community trade mark registration No 8 531 436 (earlier mark 2)

Class 14: Jewellery, clocks.

The contested goods and services are the following:

Class 25: Corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks; clothing and sporting articles for men, women and children (not included in other classes), swimsuits.

Class 35: Advertising and business services in the corsetry and underwear market; import-export, agency and sole agency for corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks; clothing and sporting articles for men, women and children (not included in other classes), and swimsuits; information and consultancy services in relation to retailing the abovementioned products, including via worldwide computer networks.

Class 39: Transport; packaging, storage and distribution of corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks; clothing and sporting articles for men, women and children (not included in other classes) and swimsuits.

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 25

The contested corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks; swimsuits are included in the broad category of the opponent’s clothing covered by earlier mark 1. Therefore, they are identical.

The contested clothing for men, women and children (not included in other classes) and the opponent’s clothing covered by earlier mark 1 are the same goods and, therefore, they are identical.

The contested sporting articles for men, women and children (not included in other classes) overlap with the opponent’s clothing covered by earlier mark 1; therefore, they are identical.

Contested services in Class 35

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

Business services include business management services, business administration services and office functions.

Business management services are usually rendered by companies specialised in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy.

These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to efficiently allocate financial and human resources, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products, how to create a corporate identity, etc.

Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities towards common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

Office functions are the internal day-to-day operations of an organisation, including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders as well as support services, such as the rental of office machines and equipment.

Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. They are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods.

An agency is a company that represents another company or sells its products or promotes its services. A sole agency is the only appointed company for the same purposes.

Taking into account the foregoing, the contested services in Class 35 are dissimilar to all the opponent’s goods and services covered by earlier mark 1 and all of the opponent’s goods covered by earlier mark 2, since they have different purposes, usual origins and distribution channels. Furthermore, they are neither in competition nor complementary. The fact that the subject matter of the services and the goods in question is the same is not a relevant factor for finding a similarity.

Contested services in Class 39

Transport and distribution services refer to a fleet of trucks or ships used to move goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of goods. The nature, purpose and method of use of these services and the transported or distributed goods are different. They do not have the same distribution channels and they are not in competition.

Packaging and storage services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. Those services are not similar to the goods that could be packed or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers and producers or distribution channels and they are not in competition.

Taking into account the foregoing, the contested services in Class 39 are dissimilar to all the opponent’s goods and services covered by earlier mark 1 and all of the opponent’s goods covered by earlier mark 2, since they have different purposes, usual origins and distribution channels. Furthermore, they are neither in competition nor complementary.

The opponent refers to a judgment of a Spanish court, which is submitted as Exhibit No 1. The document is in Spanish and only part of it is translated in the opponent’s observations. Since the translated part does not address any comparison of goods and services, it is irrelevant to the comparison of goods and services carried out in the present section.

Since only the contested goods in Class 25 are identical to the opponent’s goods in Class 25 covered by earlier Community trade mark No 183 756 and the rest of the contested services are dissimilar to all to opponent’s goods and services covered by earlier Community trade mark registrations No 183 756 and No 8 531 436, the examination of the opposition will continue in relation to only earlier Community trade mark No 183 756.

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, on the whole, average.

3. The signs

VOGUE
Earlier trade mark	Contested sign

The relevant territory is the European Union. The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

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

The earlier mark is composed of the word ‘VOGUE’.

The contested sign is a figurative mark that contains ‘VOGUE’ written in black upper case slightly stylised letters inside a thin black rectangular frame.

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

As regards the contested sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The earlier mark is a word mark. Therefore, by definition, it lacks dominant elements.

The verbal element ‘VOGUE’ in the contested sign is the dominant element as it is the most eye-catching, due to its size and central position and also because the rectangular frame has a thin outline.

Visually, the signs coincide in ‘VOGUE’. They differ in only the typeface of this word and in the rectangular frame in the contested sign. Therefore, the signs are highly similar.

Aurally, since the sole verbal element that both signs contain is ‘VOGUE’, the pronunciations of the signs are identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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 earlier 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 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.

5. Global assessment, other arguments and conclusion

The relevant goods and services are partly identical and partly dissimilar.

The signs are visually similar to a high degree and aurally identical due to the presence of the letters ‘VOGUE’ in both signs. The earlier mark is distinctive and it is fully incorporated and is the sole verbal element of the contested sign.

Regarding the graphic depiction of the contested sign, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Therefore, the graphic depiction of the contested sign is not sufficiently striking for the consumers’ to distinguish the signs in their minds. Furthermore, consumers will probably perceive the contested sign as a figurative version of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s Community trade mark registration No 183 756. 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 found to be identical to those of the earlier trade mark.

The contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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 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

Michaela SIMANDLOVA

Alexandra APOSTOLAKIS

Gueorgui IVANOV

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.