OPPOSITION No B 2 934 407

Rica Levy International (Société Anonyme), Zone Industrielle, 1ère Avenue, 6001 Métres, 06510, Carros, France (opponent), represented by Cabinet Marek, 28 rue de la Loge, 13002, Marseille, France (professional representative)

a g a i n s t

Kfive Beteiligungs UG (haftungsbeschränkt), Leipziger Platz 7, 10117 Berlin, Germany (applicant), represented by Weitnauer Rechtsanwälte, Französische Str. 13, 10117 Berlin, Germany (professional representative).

On 21/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 934 407 is upheld for all the contested goods and services, namely:

Class 25: Gym suits; Sportswear; Leisure shoes; Leisurewear; Footwear for women; Shoes; Flat shoes; Trousers; Short trousers; Casual trousers; Leggings [trousers]; Trousers for children; Trousers of leather; Gloves [clothing]; Jackets [clothing]; Jackets being sports clothing; Stockings; Leather jackets; Leather clothing; Clothing of imitations of leather; Neck scarfs [mufflers]; Neckerchiefs; Mufflers [clothing]; Pullovers; Sweat shirts; Caps with visors; Caps [headwear]; Tee-shirts.

Class 35: Retail store services in the field of clothing; Retail services in relation to footwear; Retail services in relation to clothing; Retail services connected with the sale of clothing and clothing accessories.

2. European Union trade mark application No 15 861 412 is rejected for all the contested goods and services above. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 861 412 ,

namely, against all of the goods in Class 25 and against some of the services in class 35 (at the time of filing). The opposition is based on International trade mark registration No 436 439 designating Italy, Austria, Benelux, Germany and Spain and French trade mark registration No 1 421 616, Leonardo Da Vinci. The opponent invoked Article 8(1) (b), EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier international trade mark registration No 436 439 designating Italy, Austria, Benelux, Germany and Spain on which the opposition is, inter alia, based.

On 17/08/2017, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 22/12/2017.

The opponent submitted some documents concerning the renewal of the International registration on 20/02/2018 but the required certificate of renewal was furnished on 20/04/2018, that is, only after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier right. The examination will proceed in respect of the remaining (duly substantiated) French trade mark registration No 1 421 616, Leonardo Da Vinci.

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 and services

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

Class 25: Clothing of all kinds, underwear and tracksuits, jackets, blousons, trousers, jeans; hosiery, namely: stockings, socks, knitwear, jumpers, knitted shirts; linen and lingerie; swimsuits, footwear and headgear; clothing accessories, namely belts, suspenders, gloves, ties, scarves.

The contested goods and services are the following:

Class 25: Gym suits; Sportswear; Leisure shoes; Leisurewear; Footwear for women; Shoes; Flat shoes; Trousers; Short trousers; Casual trousers; Leggings [trousers]; Trousers for children; Trousers of leather; Gloves [clothing]; Jackets [clothing]; Jackets being sports clothing; Stockings; Leather jackets; Leather clothing; Clothing of imitations of leather; Neck scarfs [mufflers]; Neckerchiefs; Mufflers [clothing]; Pullovers; Sweat shirts; Caps with visors; Caps [headwear]; Tee-shirts.

Class 35: Retail store services in the field of clothing; Retail services in relation to footwear; Retail services in relation to clothing; Retail services connected with the sale of clothing and clothing accessories.

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 gym suits; sportswear; leisurewear; trousers; short trousers; casual trousers; leggings [trousers]; trousers for children; trousers of leather; gloves [clothing]; jackets [clothing]; jackets being sports clothing; stockings; leather jackets; leather clothing; clothing of imitations of leather; neck scarfs [mufflers]; neckerchiefs; mufflers [clothing]; pullovers; sweat shirts; tee-shirts are included in the broad category of the opponent´s clothing of all kinds. They are identical.

The contested leisure shoes; footwear for women; shoes; flat shoes are included in the broad category of the opponent´s footwear. They are identical.

The contested caps with visors; caps [headwear] are included in the broad category of the opponent´s headgear. They are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail store services of in the field of clothing; retail services

in relation to clothing; retail services connected with the sale of clothing are similar

to a low degree to the opponent’s clothing of all kinds.

The contested retail services connected with the sale of clothing accessories are

similar to a low degree to the opponent’s clothing accessories, namely belts,

suspenders, gloves, ties, scarves.

The contested retail services in relation to footwear are similar to a low degree to the opponent’s footwear.

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 and services found to be identical or similar to a low degree are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

LEONARDO DA VINCI
Earlier trade mark	Contested sign

The relevant territory is France.

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 mark is made up of the words Leonardo Da Vinci, known to the relevant public as an illustrious Italian painter, sculptor, architect, and engineer from the renaissance period. His renown is not associated with clothing, footwear or headgear of any kind. The words are, therefore, distinctive.

The contested sign is made up of the same name, distinctive for the relevant goods and their retail services for the same reason as above, together with the basic, English word museum, which is likely to be perceived as a building where interesting and valuable objects are kept and displayed to the public, due to its resemblance to the French equivalent musée. This element is weaker as museum shops are known to sell a wide range of items including apparel of all kinds. The verbal elements are depicted in a lightly stylised font and are set against a background made up of an intersecting square and a circle. These figurative elements are purely decorative.

There are no dominant elements, however 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 coincide in ‘Leonardo Da Vinci’, which is distinctive. They differ in ‘museum’, which is weak, together with the figurative elements of the contested sign, which are non-distinctive.

Therefore, the signs are highly similar.

Aurally, the signs coincide in ‘Leonardo Da Vinci’, which is distinctive. They differ in ‘museum’, which is weak.

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually identical to the extent that the sole distinctive element of both signs is the same.

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 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

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).

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.

As has been concluded above, the contested goods and services are identical or similar to a low degree to the goods covered by the earlier mark. For the relevant public in France, the signs are visually and aurally similar to a high degree. They are conceptually identical to the extent that they share Leonardo Da Vinci. The earlier mark is distinctive and is fully contained in the contested sign.

Therefore, the differences between the signs do not suffice to differentiate them to the average consumer even for those services which are only similar to a low degree.

This is the case regardless of whether or not the consumer recognises that the contested sign´s geometrical background is reminiscent of Da Vinci´s Vitruvian man. In this scenario, contrary to the applicant´s views, the background merely reinforces the distinctive element of the sign, again in a decorative way.

Indeed, it is 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 or services that it designates.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s French trade mark registration.

It follows from the above that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Loreto URRACA LUQUE

Keeva DOHERTY

Oana-Alina STURZA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.