OPPOSITION No B 2 894 486

Successori Bernagozzi Societa' a responsabilita' limitata, Presso Centergross Frazione Funo - Via dei Lanaioli, 40050 Argelato, Italy (opponent), represented by Ing. Claudio Baldi S.R.L., Viale Cavallotti, 13, 60035 Jesi (Ancona), Italy (professional representative)

a g a i n s t

Sophie Hubert, 2 Rue des Vergers, 5471 Wellenstein, Luxembourg (applicant).

On 23/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 894 486 is upheld for all the contested goods.

2. European Union trade mark application No 16 361 222 is rejected in its entirety.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 361 222 ‘SOPHIE H’. The opposition is based on International trade mark registration No 1 237 642 designating the European Union . The opponent invoked Article 8(1)(b) 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; bags; clutch purses; change purses; wallets; coin purses; rucksacks; all purpose sports bags; haversacks; beach bags; carrying cases for documents; shopping bags with wheels attached; textile shopping bags; handbags; school satchels; suitcases; sports bags; tote bags; shoulder bags; bum bags; cosmetic bags (empty); trunks and travelling bags; umbrellas; parasols;

walking sticks; leads for animals.

Class 25: Clothing; sweaters; cardigans; waistcoats; dresses; trousers; shorts; jerseys; raincoats; leather clothing; woolen clothing; stockings; stocking suspenders; sock suspenders; wind resistant jackets; ski pants; fur coats; evening coats; overcoats; skirts; suits; jackets; undershirts; T-shirts; clothing for gymnastics; ladies'

shirts; collars; shirts; neckerchiefs; swimming costumes; tracksuits; wedding dresses; bath robes; underwear; brassieres; corsets; slips; underpants; briefs; nightshirts; housecoats; pyjamas; gloves; shawls; scarves; neckties; bow ties; belts [clothing]; braces; hats; caps; shoes; boots; ankle boots; leather shoes; galoshes; rain boots; sports footwear; sandals; slippers; soles for footwear; heels; footwear uppers.

The contested goods are the following:

Class 18: Handbags.

Class 25: Clothing.

Handbags and clothing are identically included in the list of goods of both marks under comparison.

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 with an average degree of attention.

3. The signs

	SOPHIE H
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 word element ‘SOPHIA’ in the earlier sign will be perceived by the relevant public as a female given name and the figurative element in the form of a semicircle with a letter ‘S’ inside will be perceived as an stylized letter ‘S’, repetition of the first letter of the word element ‘SOPHIA’.

In the contested sign, the word element ‘SOPHIE’ will be also perceived as a female given name and the letter ‘H’ which follows the name ‘SOPHIE’ as the initial letter of a middle name or surname.

The words ‘SOPHIA’ and ‘SOPHIE’ evoke no concept with regard to the goods in question and are therefore distinctive. The same concerns the figurative element of the earlier mark and the letter ‘H’ of the contested sign.

None of the signs has elements which could be considered more distinctive than other elements.

In the earlier sign, the word element ‘SOPHIA’ is visually dominant (more eye-catching) in relation to the figurative element since the latter is represented in a less intensive shade. Furthermore, 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).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same female given name but in different languages, they are conceptually similar to a high degree.

Visually, the signs coincide in the letters ‘SOPHI’. However, they differ in the last letter of the word elements ‘SOPHIA’ and ‘SOPHIE’ as well as in the last word element ‘H’ of the contested sign and in the figurative element of the earlier sign. 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 ‘SOPHI*’. The pronunciation differs in the sound of the last letter of the words ‘SOPHIE’ and ‘SOPHIA’, that is, ‘E’ (when pronounced) and ‘A’. Contrary to the opponent’s arguments, the pronunciation of the signs also differs in the sound of the letter ‘H’ which, since it is represented as a single element, separated from other letters, will be pronounced as it is named in the different parts of the relevant territory (for instance, aitch or haitch in English, acca in Italian or hache in Spanish).

As to the figurative element of the earlier sign, it will not be pronounced by the majority of the relevant public since it will be perceived as the repetition of the initial letter of ‘SOPHIA’.

Therefore, the signs are aurally highly similar.

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

It has been established in the previous sections of the decision that the contested goods are identical and the signs are visually similar to an average degree and aurally and conceptually similar to a high degree.

In light of all the considerations given above, it may be concluded that there is a likelihood that a sizeable proportion of the relevant public, who will have to place their trust in the imperfect picture of the trade marks that they have kept in their minds and do not usually pay a high level of attention when purchasing the goods in question, may be led to believe that the identical goods may come from the same undertaking, if not to confuse one trade mark with the other, then certainly to believe that they come from the same undertaking or, as the case may be, from economically linked undertakings.

According to the applicant, likelihood of confusion between the marks in comparison is unlikely since the earlier mark is always associated with the word ‘Curvy’ and exclusively focused on the curvy girls market sector. It referred to the opponent’s websites to support these arguments. The Opposition Division notes that the evidence submitted by the applicant does not necessarily reflect the situation in the market. Therefore, on the basis of register data only, it cannot be assumed that the earlier mark is always associated with the word ‘Curvy’ and has been exclusively used on the curvy girls market sector as claimed by the applicant. It follows that the applicant’s claims must be set aside.

Moreover, the applicant argued that there are other trade marks which have been successfully registered more recently while they present a higher degree of similarity with the early trade mark. However, relative grounds for refusal are inter partes proceedings based on likely conflict with earlier rights and it is up to the earlier rights owners, and not to the Office, to be vigilant concerning the filing of EUTM applications by others that could clash with such earlier rights, and to oppose conflicting marks when necessary. Therefore, a EUTM application may be only rejected based on the existence of an earlier similar right if an opposition is filed in due time by proprietor of the earlier right.

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 international trade mark registration No 1 237 642. It follows that the contested trade mark must be rejected for all the contested goods.

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

Arkadiusz GORNY

Ana María MUÑIZ RODRIGUEZ

Michal KRUK

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.