OPPOSITION No B 2 617 010

Balenciaga, 40 rue de Sèvres, 75007 Paris, France (opponent), represented by Brandstorming, 11, rue Lincoln, 75008 Paris, France (professional representative)

a g a i n s t

Cecile Reinaud, 29 Downside Crescent, London NW3 2AN, United Kingdom (applicant).

On 27/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 617 010 is upheld for all the contested goods.

2. European Union trade mark application No 14 512 818 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 512 818. The opposition is based on European Union trade mark registration No 11 865 805. The opponent invoked Article 8(1)(b) and Article 8(5) 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

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

Class 18: Leather and imitations of leather, animal skins and imitation animal skins; handbags, shoulder bags, carrier bags, baggage and luggage, pocket wallets, purses, purses, card holders (wallets), briefcases, attaché cases, attaché cases, school bags, school bags, beach bags, bags for sports, beltbags, sling bags and traveling sets, valises, trunks [luggage], travelling bags, backpacks, shopping bags, clutch purses, vanity cases (not fitted), toiletry pouches (empty), garment bags for travel, travel sets, namely sets of coordinated luggage for travel, key cases (leatherware); umbrellas, parasols and walking sticks; harness for animals, whips, saddlery.

Class 25: Clothes, belts (clothing), gloves (clothing), footwear and headgear.

The contested goods are the following:

Class 10: Shoes (orthopaedic -).

Class 18: Leather.

Class 25: Shoes.

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 10

The contested shoes (orthopaedic -) present certain connections with the opponent’s footwear in Class 25. It is true that orthopaedic footwear is meant to provide more support for the feet and ankles than basic footwear and to provide relief for conditions such as bunions, fallen arches or hammertoes; nevertheless, these goods have the same nature, method of use and intended purpose as the opponent’s footwear. Moreover, although the contested goods are normally sold in specialised shops, it is not uncommon to find footwear articles with certain orthopaedic features also in ordinary footwear shops. Therefore, these goods are similar.

Contested goods in Class 18

Leather is identically contained in both lists of goods.

Contested goods in Class 25

Shoes are identically contained in both lists of goods (including synonyms).

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.

The goods found to be identical or similar are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise. The attentiveness of the relevant public will vary from average to higher than average, taking into account the therapeutic nature of some of the goods in question which can have an effect on human health condition.

3. The signs

BALENCIAGA	Balancina
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).

Both marks under comparison are word marks consisting of one word element. Neither of the mark conveys any clear meaning to the relevant public in relation to the goods in question.

Visually, the signs coincide in their structure, since they both consist of one sole word element of almost the same length (ten letters vs nine letters). In particular they coincide in the sequence of letters ‘BAL*NCI**A’. Furthermore, it is noted that in case of word marks, the use of lower case or upper case letters is not relevant since word marks protect the word as such and not its representation.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘BAL*NCI**A’, present identically in both signs. The pronunciation differs in the sound of the letters ‘E/A’ in the middle part of the marks and ‛AG’/’N’ placed close to the end of the marks, respectively.

Therefore, the signs are aurally similar to an average degree.

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.

According to the opponent, the earlier 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’).

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 goods under comparison are partly identical and partly similar. The marks are visually and aurally similar to an average degree and there is no conceptual difference between them.

It is considered that the similarities caused by the identical sequence of letters ‘BAL*NCI**A’ largely outweigh the difference in the letters ‘E/A’ and ‛AG’/’N’, which, being placed in the central and ending parts of the marks are less likely to be immediately noticed by consumers when they confronted with the marks.

Moreover, account should be 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.

In the light of the foregoing considerations and taking into account the principle of interdependence between the relevant factors, the normal degree of inherent distinctiveness of the earlier mark and the absence of any conceptual difference between them, a likelihood of confusion exists on the part of the relevant public, for the contested goods found to be identical and similar. Given the high similarity between the marks, the above conclusion applies even taking into account the high degree of attention of part of the relevant public.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 865 805. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Isabel DE ALFONSETI HARTMANN

Claudia ATTINAÀ

Ana MUÑIZ RODRÍGUEZ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.