OPPOSITION No B 2 913 765

P.R. S.p.A., Corso di Porta Nuova, 46, 20121 Milano, Italy (opponent), represented by Studio Torta S.p.A., Via Viotti, 9, 10121 Torino, Italy (professional representative)

a g a i n s t

Purish GmbH, Heubnerweg 8-10, 14059 Berlin, Germany (applicant), represented by Mehler Achler Patentanwälte Partnerschaft mbB, Bahnhofstr. 67, 65185 Wiesbaden, Germany (professional representative).

On 31/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 913 765 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 442 808 for the word mark ‘purish’, namely against all goods in Class 25. The opposition is based on European Union trade mark registration No 6 120 166 for the word mark ‘P.A.R.O.S.H.’, European Union trade mark registration No 9 598 079 for the word mark ‘P.A.R.O.S.H.’, international trade mark registration No 1 115 060 designating the European Union for the word mark ‘PAROSH’ and Italian trade mark registration No 1 500 135 for the word mark ‘PAROSH’. 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).

International registration No 1 115 060 designating the European Union for the word mark ‘PAROSH’

In the present case, the notice of opposition was not accompanied by any evidence as regards earlier international registration No 1 115 060 designating the European Union for the word mark ‘PAROSH’, on which the opposition is based.

On 21/06/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 26/10/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

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 international registration No 1 115 060 designating the European Union.

Italian trade mark registration No 1 500 135 for the word mark ‘PAROSH’

In the present case, the evidence filed by the opponent for Italian trade mark registration No 1 500 135 for the word mark ‘PAROSH’ consists of a registration certificate from the Italian Patent and Trademark Office and a translation of said certificate.

However, there is a discrepancy between the owner of the registration, as displayed on the certificate, namely P.R. S.R.L., and the name of the opponent, namely P.R. SpA. The opponent did not submit any documentation rectifying this issue to the Office within the time limit set for the opponent to substantiate the earlier rights, which expired on 26/10/2017.

Therefore, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier Italian trade mark registration No 1 500 135, because the opponent has not proven that it is the owner of the earlier Italian trade mark registration.

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 Italian trade mark registration No 1 500 135.

However, the Opposition Division will proceed to examine the opposition based on the opponent’s two remaining earlier rights, namely European Union trade mark registration No 6 120 166 for the word mark ‘P.A.R.O.S.H.’ and European Union trade mark registration No 9 598 079 for the word mark ‘P.A.R.O.S.H.’.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

In its observations of 02/01/2018, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 598 079 for the word mark ‘P.A.R.O.S.H.’.

1. The goods

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

Class 25: Articles of clothing for men; Women and children; Dresses; Jackets; Padded clothing; Blousons; Fur coats; Clothing of leather; Coats; Trousers; Skirts; Stockings; Articles of knitwear; T-shirts.

The contested goods are the following:

Class 25: Clothes - articles.

As a preliminary remark, a clarification is needed for the term articles of clothing for men; women and children in the opponent’s list of goods. The Opposition Division considers that a typographical error has been made by the opponent and that the term should be understood as articles of clothing for men, women and children, as the term women and children alone does not make sense in relation to the scope of protection.

The contested clothes - articles include, as a broader category, the opponent’s clothing for men, women and children. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 target the public at large. The degree of attention is considered to be average.

3. The signs

P.A.R.O.S.H.	Purish
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 earlier trade mark consists of a combination of letters, each of them followed by a full point: ‘P.A.R.O.S.H.’. The contested sign consists of the word ‘Purish’. Both signs are word marks. In the case of word marks, the word itself is protected, and not its written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters or in a combination of both.

Neither of the signs as a whole has any meaning in the languages of the relevant territory. As a result, the signs are likely to be perceived as fanciful words and are, therefore, distinctive for the goods at issue.

Visually, the signs coincide in their consonants, which are the first, third and two last letters of the signs, ‘P’, ‘R’ and ‘SH’. However, they differ in their vowels, ‘A’ and ‘O’ of the earlier mark and ‘U’ and ‘I’ of the contested sign, which are visually quite different. In addition, they differ in the six full points, one placed after each of the letters in the earlier sign, which make the sign appear longer by creating more space between the letters.

Therefore, the signs are visually similar to only a low degree.

Aurally, both signs consist of two syllables, ‘PA/ROSH’ and ‘PU/RISH’. Although the coinciding letters, ‘P’, ‘R’ and ‘SH’, create similar sounds at the beginnings of the syllables and at the ends of the signs, the pronunciation of the signs’ syllables differ noticeably due to the different vowels, ‘A’ and ‘O’ of the earlier mark and ‘U’ and ‘I’ of the contested sign, which are pronounced quite differently.

Therefore, the signs are aurally similar to a low 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 trade mark enjoys a high degree of distinctiveness as a result of its long standing and intensive use in the European Union in connection with clothing. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18). The contested sign was filed on 07/03/2017, but it has a priority date of 14/09/2016 from Germany (German trade mark registration No 302 016 026 512). Therefore, the opponent is required to show enhanced distinctive character of the earlier mark before the priority date of 14/09/2016.

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• An undated profile of the company P.R. SpA and the trade mark ‘P.A.R.O.S.H.’, including information such as the company’s history, designer, distribution and media coverage. It states that the company has distribution outlets and showrooms in Milan, Paris, London and New York, where the company’s clothing is sold in luxury shops and department stores. The opponent states that the brand has been covered in more than 300 editorials worldwide in magazines that reach a readership of over 6 million people every year.

• Several copies of press clippings and advertisements in various publications, some dated in the period between 09/04/12 and 24/09/16 and some undated. The documentation mostly shows clothing, shoes and clothing accessories bearing the trade mark ‘P.A.R.O.S.H.’.

• Turnover figures for each of the years in the period between 2012 and 2017, in which the figures are broken down into the categories ‘the EU’, ‘Other’ and ‘e-commerce’.

• Advertising expenditure on promoting the brand PAROSH/P.A.R.O.S.H. for each of the years in the period between 2012 and 2017. However, it is not specified whether the expenses are exclusively related to the relevant territory, namely the European Union, or if the numbers also include other territories.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark had acquired a high degree of distinctiveness through its use.

The press articles, turnover figures and advertising expenditure indicate that promotional and commercial activities were carried out in relation to the opponent’s mark in the EU for clothing in Class 25. However, the opponent did not file any other supporting documents that would give an indication of the degree of recognition of the trade mark by the relevant public. Such a document might be a survey of the mark’s recognition that supports the finding of the brand awareness (e.g. a survey of the recognition of the mark among the public or publicly audited turnover figures) of the earlier trade mark and demonstrates that the company has used its resources to reach the threshold of enhanced distinctive character for its mark. Therefore, this claim is rejected as unfounded.

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

According to settled case-law, 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, § 16, EU:C:1998:442, § 29).

In the present case, the goods are identical. The relevant public consists of the public at large, which is considered to have an average degree of attention. The earlier mark enjoys an overall average degree of inherent distinctiveness.

The signs are visually and aurally similar to a low degree.

It must be noted that, generally, in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50).

Therefore, the Opposition Division considers that the visual differences between the signs are clearly perceptible and sufficient to exclude any likelihood of confusion between them despite the finding that the goods are identical.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark registration No 6 120 166 for the word mark ‘P.A.R.O.S.H.’, in relation to which the opposition is based on the following goods:

Class 25: Belts for clothing, headscarves, hats, scarves, gloves, suits, skirts, trousers, shirts, T-shirts, pullovers, sweaters, jackets, blousons, overcoats, raincoats, swimming costumes and swimming trunks, bathing wraps, tracksuits, anoraks.

European Union trade mark registration No 6 120 166 contains exactly the same sign and covers a narrower scope of goods than European Union trade mark registration No 9 598 079, which has already been compared. Therefore, the outcome cannot be different in relation to either the comparison of the signs or the assessment of enhanced distinctiveness.

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

Martin EBERL

Tu Nhi VAN

Lars HELBERT

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.