OPPOSITION No B 2 893 835

Kuvera S.p.A., Piazza dei Martiri, 30, 80121 Napoli, Italy (opponent), represented by Barzano’ & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Industrias Carnicas Carpisa S.L., C/ Noruega 3, 28971 Griñón/Madrid, Spain (applicant), represented by María Covadonga Fernández-Vega Feijoo, C/ Carbonero y Sol 42 A, 28006 Madrid, Spain (professional representative).

On 27/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 893 835 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods of European Union trade mark application No 16 361 909 , namely against goods in Classes 29 and 30. The opposition is based on the following trade mark registrations:

• European Union trade mark registration No 10 529 659 ‘CARPISA’ (earlier mark 1) for goods in Classes 14, 18 and 25;

• Italian trade mark registration No 595 798 ‘CARPISA’ (earlier mark 2) for goods in Classes 3, 18 and 25;

• Italian trade mark registration No 957 697 ‘CARPISA’ (earlier mark 3) for goods in Classes 18 and 25;

• Italian trade mark registration No 1 476 912 (earlier mark 4) for goods in Classes 18 and 25;

• Italian trade mark registration No 1 440 038 (earlier mark 5) for goods in Classes 18 and 25.

The opponent invoked Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant claims to have due cause for using the contested trade mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union as regards earlier mark 1 and in Italy as regards earlier marks 2-5.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 13/02/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union and in Italy prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely the following:

Earlier mark 1

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Earlier mark 2

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Articles of clothing included shoes, boots and slippers.

Earlier marks 3, 4 and 5

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing; footwear; headgear.

The opposition is directed against the following goods:

Class 29: Meats; processed meat products; frozen meat products; prepared meals made from meat [meat predominating]; hamburgers; beefburgers; meat products being in the form of burgers; packaged meats; mincemeat [chopped meat]; shish kabobs; meatballs; ready cooked meals consisting wholly or substantially wholly of meat; prepared meat dishes; prepared dishes consisting principally of meat.

Class 30: Hamburgers contained in bread rolls; meat pies; hamburgers being cooked and contained in a bread roll; meat gravies; Seasoned coating for meat, fish, poultry; Sauces for barbecued meat; Preparations for making up into sauces.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 22/11/2017 the opponent submitted, in particular, the following evidence:

• Catalogues: cover pages of catalogues dated 2008, 2009, 2010, 2012, 2014 and 2015, on which the trade mark is reproduced together with pictures of bags.

• Press articles about the brand ‘CARPISA’ published in various EU countries between 2006 and 2017 and, inter alia, the following:

• an article from www.pambianconews.com, dated 12/04/2006, stating that with the opening of 90 new ‘CARPISA’ stores the brand will own more than 300 stores in the EU;

• an article from www.corrieredelmezzogiorno.it, dated 07/07/2008, about the selection of a new testimonial by the ‘Neopolitan brand of handbags and fashion accessories’;

• an article dated 25/05/2010 from www.corrieredelmezzogiorno.it stating that ‘CARPISA’ signed ‘a series of bags’ for Italian football players during the 2010 World Cup;

• an article dated 20/12/2011 from www.pambianconews.com announcing that ‘NTV chose the suitcases Carpisa for the crews of Italo, the new super-technological train that will come into service in early 2012’;

• an interview with Mr Cimmino, Carpisa’s CEO, published in www.millionaires.it, dated 10/08/2011, about the choice of the diver T. Cagnotto as ‘the face of its new line of suitcases’; the CEO indicated that Carpisa has ‘500 stores in Italy, 45 aboard’ and that it is ‘the first sales network in the European retail bags, accessories and luggage’;

• an article dated 29/10/2012 from www.pambianconews.com announcing the licence agreement between the opponent and Warner Bros. Consumer Products for a line of Carpisa travel bags;

• an article entitled ‘Carpisa, partner Miss Universe Italy 2013’ published on www.missuniverseritaly.it, according to which ‘Carpisa, Italian brand leader in bags and luggage, is proud partner of the prestigious beauty contest Miss Universe 2013 Italy’;

• an article, dated 14/09/2015, entitled ‘Carpisa and Coca-Cola: the project co-marketing in second screen’ stating ‘Carpisa (Italian brand born in 2001 active in the word of fashion and accessories, owned by Kuvera Spa, able to offer a product that is stylish with a quality attractive price)’;

• an article from www.evolutioncomunication.com dated July 2015 which indicates that the opponent ‘now has 650 brand stores of which 480 in Italy and 150 abroad […] Leader in luggage, also offers collections of bags and small leather goods’;

• an article dated 04/02/2016 from www.timesofmalta.com entitled ‘Carpisa and Penélope Cruz together again’, in which it is stated that ‘Carpisa, the Italian brand leader in handbags and suitcases, renewed its collaboration with Penélope Cruz for 2016’.

• Press clippings mentioning the trade mark ‘CARPISA’ in Spain from 2013, 2014, 2016 and 2017, and in Greece from 2016 and 2017; they are mainly from fashion magazines, such as Marie Claire, Glamour, Woman, Elle, Madame Figaro, Cosmopolitan, People and Vogue, but also newspapers targeting the general public, such as El País or El Periódico (Spain), and social media (Facebook).

• Advertisements:

• copies of numerous advertisements displaying the trade mark , published between 2006 and 2017 notably in Italian and Spanish magazines specialised in fashion (e.g. Donna Moderna, Vanity Fair, Woman, Cosmopolitan and Glamour) and newspapers (e.g. La Repubblica and La Nazione);

• screenshots of advertisements for the trade mark published in national magazines and newspapers notably in Croatia, Greece, Malta, Romania, Serbia, Slovakia and Spain in 2014, as well as screenshots of advertisements posted on Facebook.

• Videos of TV spots advertising ‘CARPISA’ goods, namely luggage (e.g. videos showing the Italian water polo team and the famous Italian diver Tania Cagnotto), handbags (spots with the actress Penelope Cruz), and men’s bags and luggage (spot shown on the opponent’s Italian website).

• Sponsorships: numerous articles mentioning activities and teams sponsored by the ‘CARPISA’ brand, such as the Italian basketball team of Naples (2006), the Miss Italia competition (2007), the America’s Cup held in Spain (2007), X Factor Italia (2008), MSC Crociere (2009), the Italian water polo team (2001-2012) and the Miss Universe competition (2013).

• Financial figures: internal documents demonstrating the level of advertising and promotional investments made in European Union countries. The documents show that in 2014 the opponent invested 55% of its budget in raising awareness of the trade mark ‘CARPISA’: ‘display awareness’ (EUR 104 822.11), ‘programmatic buying’ (EUR 61 965.28), Facebook (EUR 12 440.79) and ‘paid search’ on Google (EUR 10 174.89), that is, a total investment of approximately EUR 190 403.07. In particular, the opponent invested, inter alia, EUR 12 544.97 in total in Greece, almost EUR 7 000 in Malta and EUR 43 000 in Spain.

The applicant argues that the opponent did not submit translations of some of the evidence of reputation and that therefore this evidence should not be taken into consideration. However, the Opposition Division notes that, contrary to the applicant’s claim, most of the evidence is in English or translated into English and is dated. Therefore, this evidence has to be taken into account in assessing the reputation of the trade marks.

The abovementioned evidence indicates that the earlier trade marks had been used for a substantial period before the filing of the contested sign (i.e. since 2006). The level of advertising investments, the press articles and the expenditure on raising awareness of the trade mark, along with posts in the social media, indicate that the trade mark has a consolidated position in the market in the European Union, which is also illustrated by the sponsorship activities of the opponent in relation to the trade mark ‘CARPISA’. Furthermore, the evidence demonstrates that the trade mark was used continuously from 2006 until the filing of the contested sign, in magazines specialised in fashion, some of them being well known and being distributed to a wide range of consumers in Europe (as listed above, in particular Vogue, Elle, Cosmopolitan and Vanity Fair). That means that the public targeted by these publications had ongoing exposure to the opponent’s trade mark over a long period (12/01/2011, R 446/2010-1, TURBOMANIA / TURBOMANIA).

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks ‘CARPISA’ enjoy a certain degree of recognition among the relevant public for bags, handbags and travelling bags (i.e. luggage), which leads to the conclusion that the earlier trade marks enjoy some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade marks, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade marks have a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to bags, handbags and travelling bags (i.e. luggage), whereas there is no or little reference to the remaining goods listed above. This is clear, for example, from the press clippings, the advertisements and the extracts from catalogues, where only the former are mentioned or depicted.

2. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In its observations dated 22/11/2017, the opponent claims, inter alia, the following:

In view of the undoubted reputation of the earlier mark, it seems inevitable that the image of the trade mark and the characteristics that it projects (e.g. a long-standing presence on the market and a high degree of brand awareness) will be transferred to the applicant’s goods and services if they are marketed under the contested signs. In view of the coincidences between the distinctive elements ‘CARPISA’ of the earlier marks and ‘CARPISA’ of the contested sign, the contested sign would receive an unfair ‘boost’ as a result of it being linked with the opponent’s reputed trade marks in the minds of European/Italian consumers. […] The contested sign would exploit the attractive powers or distinctiveness of the earlier mark. The contested sign will this benefit from the repute of the earlier mark. On the basis of the above, may be concluded that the contested sign is likely to take unfair advantage of the distinctive character or the repute of the earlier mark.

In its observations filed on 26/04/2018, the opponent further claims that:

It is likely that the use of the CARPISA trademark in relation to the contested goods would take unfair advantage from the earlier reputed mark.

In other words, apart from claiming a reputation and arguing that consumers will establish a link between the trade marks because of the similarities between them, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30).

As stated above, the opponent should have at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade mark. The circumstances described as being ‘detrimental to the repute’, ‘detrimental to the distinctive character’, or taking ‘unfair advantage of the distinctive character or repute of the earlier trade mark’, are in fact very different from each other. In its submissions, the opponent refers to them without any distinction, treating the whole as an unavoidable effect of the similarity of the signs and the reputation of the earlier trade marks. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

For the sake of completeness, the Opposition Division also notes that the markets for the opponent’s and the applicant’s goods, that is, fashion accessories and foodstuffs, respectively, are quite different in terms of their inherent characteristics. Therefore, and in the absence of any demonstration of the existence of a link between the trade marks, the Opposition Division considers that it is unlikely that the goods covered by the contested trade mark would diminish the power of attraction of the earlier marks.

The opponent refers to previous decisions of the Office (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215; 22/03/2007, T‑2015/3, VIPS, EU:T:2007:93). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the fact that the General Court acknowledged the risk of injury in an unrelated case concerning other trade marks and parties is, obviously, not relevant to the present proceedings, in which the opponent failed to establish the arguments of such a risk.

Finally, the opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

Consequently, as correctly pointed out by the applicant, the opponent has failed to establish that the use of the contested sign is likely to be detrimental to the repute of its earlier marks.

Conclusion

The opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks, as required by Article 8(5) EUTMR. As one of the necessary requirements is not met, the opposition must be rejected as not well founded under Article 8(5) EUTMR.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Julie, Marie-charlotte HAMEL

Cristina CRESPO MOLTO

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.