DECISION

of the Fourth Board of Appeal

of 19 October 2016

In Case R 842/2016-4

ADVANCE MAGAZINE PUBLISHERS INC.
One World Trade Center New York, NY 10007 United States of America	Opponent / Appellant

represented by Elzaburu, S.L.P., Miguel Angel, 21, E-28010 Madrid, Spain

v

LIGHTHOUSE TRADEMARKS, S.L.
Mestre Nicolau, 21 E-08021 Barcelona Spain	Applicant / Respondent

represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, E‑08008 Barcelona, Spain

APPEAL relating to Opposition Proceedings No B 676 553 (European Union trade mark application No 3 064 219)

The Fourth Board of Appeal

composed of D. Schennen (Chairman and Rapporteur), E. Fink (Member) and L. Marijnissen

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 21.2.2003, LIGHTHOUSE TRADEMARKS, S.L. (‘the applicant’) sought to register the figurative as amended

as a European Union trade mark (‘EUTM’) for the following list of goods and services:

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.

2. On 3.2.2004, ADVANCE MAGAZINE PUBLISHERS INC. (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods and services.

3. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

4. The opposition was based on the following earlier rights:

   1. EUTM No 183 756 for the word mark

VOGUE

registered on 28.5.2014 for the following goods and services:

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. EUTM No 8 531 436

VOGUE

registered on 18.8.2009 for the following goods:

Class 14 ‒ Jewellery, clocks.

5. By decision of 14.3.2016 (‘the contested decision’), the Opposition Division partially upheld the opposition 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.

and ordered each party to bear its own costs.

6. The Opposition Division found the contested goods in Class 25 to be identical and the contested services in Classes 35 and 39 to be dissimilar to the opponent’s goods and services. The Opposition Division found the marks visually highly similar and aurally identical and conceptually neutral. The Opposition Division stated that taking into account the abovementioned visual and aural coincidences the signs were similar.

7. The inherent distinctiveness of the earlier mark was considered to be normal and the mark targeted at the public at large with an average level of attention. The Opposition Division concluded that there is a likelihood of confusion on the part of the public for the goods in Class 25 found to be identical to those of the opponent. The Opposition was rejected for the remaining dissimilar services in Classes 35 and 39.

Submissions and arguments of the parties

8. On 4.5.2016, the opponent filed an appeal against the contested decision together with a statement of grounds, requesting that the decision be set aside to the extent that the opposition was rejected.

9. The opponent argued that the contested services in Class 35 should be considered similar, at least to a low degree, to the opponent’s ‘clothing’ in Class 25 since those goods were found to be identical to the applicant’s goods in Class 25. The contested services in Class 35 relate expressly to ‘clothing’ and therefore should not be regarded as ‘advertising and business services, import-export, agency and information and consultancy services in relation to retailing’ in the abstract.

10. The opponent argued that both the Office and the CJEU consider retail trade services to be similar to the particular goods thereby offered for sale. Those goods are expressly mentioned in the contested EUTM application and have been held by the Opposition Division to be identical to the goods covered by the earlier EUTM No 183 756. Therefore, the applicant’s services in Class 35 should be considered similar to the opponent’s goods in Class 25.

11. The applicant did not submit any observations in reply.

Reasons

12. The appeal is only partially well founded.

13. Article 8(1)(b) EUTMR requires that because of the identity with or similarity to the earlier mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected, the likelihood of confusion including a likelihood of association with the earlier mark.

14. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29.9.1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22.6.1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

15. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated. Accordingly, a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks and vice-versa (22.6.1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

Comparison of the goods and services

16. In assessing the similarity of the opposing goods and services, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, the nature, the intended purpose and the method of use of the goods or services in question and whether they are in competition with each other or are complementary (29.9.1998, C-39/97, Canon, EU:C:1998:442, § 23). It comes down to whether the relevant public may perceive the relevant products and services as having a common commercial origin (4.11.2003, T-85/02, Castillo, EU:T:2003:288, § 32, 38) and whether the consumers consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same (11.7.2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).

17. The services applied for which are still at issue in the present appeal are the following:

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.

18. The contested ‘advertising and business services in the corsetry and underwear market’ are dissimilar to the opponent’s goods and services. As correctly stated by the Opposition Division 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 third party products and services, and create a personalised strategy regarding the advertising of third party goods and services through newspapers, web sites, videos, the internet, etc. Their purpose is to reinforce the client’s position on the market in order to enable him to acquire a competitive advantage through publicity (21.10.2015, T-664/13, Petco, EU:T:2015:791, § 50). Advertisement is a service rendered to others, and making advertisement for one’s own goods is not a service falling into Class 35.

19. The same applies to the contested ‘business services in the corsetry and underwear market’. They are usually rendered by companies specialised in this specific field. 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. Therefore they are dissimilar to the opponent’s goods and services.

20. The contested ‘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’ are similar to the opponent’s ‘clothing’ in Class 25.

21. It is hard to distinguish ‘import-export, agency and sole agency’ from retail services. Retail services concerning the sale of particular goods are similar to an average degree to these particular goods (7.10.2015, T-228/14, Trecolore, EU:T:2015:761, § 33-34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The ‘import and export’ of goods is just a retail or wholesale transaction involving the move of the goods from one country to another, and ‘sole agency’ must be construed as meaning that somebody sells the relevant goods as the producer’s sole agent, which comes very close to a wholesaler. As the sole purpose of these services is to be the intermediary between the producer and the end consumer, they must be held similar to the respective goods in the same way as ‘retail’ services are.

22. The contested ‘information and consultancy services in relation to retailing the 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, including via worldwide computer networks’ are dissimilar to the opponent’s ‘clothing’, as it is not common in the market for the manufacturer of articles in Class 25 to provide such information services. It is to be underlined that the services are ‘information in relation to retailing’, so they are services aimed at assisting retailers in running their retail activities, and not services rendered to the end consumer seeking information about particular goods. They are actually a kind of ‘business’ services addressed at a professional public and aimed at assisting them in running a successful business.

23. The contested services of ‘transport of corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks’ are not considered to be similar to the earlier goods. These services are provided by specialist transport companies whose business is not the manufacture and sale of those goods. As regards the nature of the goods and services, transport services refer to a fleet of trucks or ships used to move goods from A to B.

24. Equally, ‘packaging and storage of corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks’ merely refers to the service whereby a company’s or any other person’s goods are packed and kept in a particular place for a fee. Those services are not similar to any kind of goods, including any of the goods that may be packaged and stored (7.2.2006, T‑202/03, Comp USA, EU:T:2006:44; 22.6.2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 32 and decision of 7.1.2013, R 1006/2012-G, PIONONO, § 38).

25. Therefore ‘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’ is dissimilar to any of the opponent’s goods and services.

Comparison of the marks

26. The comparison of the conflicting signs in relation to the visual, aural or conceptual similarities between the signs in question has to take into account the overall impression given by them, bearing in mind, in particular, their distinctive and dominant components (6.10.2005, C-120/04, Thomson Life, EU:C:2005:594, § 28). In addition, the assessment of the similarity between two signs does not amount to taking into consideration only one component of a composite sign and comparing it with another sign, but such a comparison must, on the contrary, be made by examining the signs in question, each considered as a whole (28.4.2004, C-3/03 P, Matratzen, EU:C:2004:233, § 32). With regard to the assessment of the dominant character of one or more given components of a complex sign, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components (28.4.2004, C-3/03 P, Matratzen, EU:C:2004:233, § 35).

27. The signs to be compared are:

    	VOGUE
    Contested sign	Earlier marks

28. The earlier marks are word marks ‘VOGUE’ and the contested mark is a figurative mark with the word element ‘VOGUE’.

29. The signs are visually similar to a high degree. They coincide in the word ‘VOGUE’. They only differ in the contested sign’s additional figurative element, a rectangular outline and a slight stylisation of the contested mark. Those elements are non-distinctive. The dominant element of the contested mark is the word ‘VOGUE’.

30. Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VOGUE’ present identically in both signs. The figurative element of the contested sign will not be pronounced by the relevant public. Therefore, the marks are aurally identical.

31. As the conflicting marks do not have any meaning in the relevant territory the conceptual comparison remains neutral.

Overall assessment of the likelihood of confusion

32. The opponent did not claim enhanced distinctive character through use. Since the earlier trade marks do not have a meaning in relation to the goods in question, their inherent distinctive character must be considered as average.

33. The goods and services concerned, to the extent they are identical or similar, are directed at the public at large. The level of attention of the relevant public will be average.

34. The contested ‘import-export, agency and sole agency services’ are similar to the opponent’s goods in Class 25. The rest of the contested services are dissimilar to any of the opponent’s goods and services.

35. Therefore there exists a likelihood of confusion for the goods and services found to be identical and similar to those of the opponent. However, the remaining contested services are dissimilar to the goods of the opponent.

36. In consequence the contested decision has to be annulled in part insofar it rejected the opposition in relation to:

Class 35 ‒ 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.

37. The contested EUTM remains registered for:

Class 35 ‒ Advertising and business services in the corsetry and underwear market; information and consultancy services in relation to retailing the abovementioned products, including via worldwide computer networks.

Class 39 ‒ (All the services).

Costs

38. According to Article 85(1) EUTMR, the losing party in appeal proceedings must bear the fees and costs incurred by the other party. Pursuant to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Boards of Appeal shall decide a different apportionment of costs. Since the appeal 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 in the opposition and appeal proceedings.

Order

On those grounds,

THE BOARD

hereby:

1. Partially annuls the contested decision, and rejects the contested trade mark application, for the following services:

Class 35 ‒ 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.

2. Dismisses the appeal for the remainder;

3. Orders each party to bear its own costs.

Signed D. Schennen

Signed E. Fink

Signed L. Marijnissen

Registrar: Signed H.Dijkema