OPPOSITION No B 2 953 738

Rosemunde ApS, Skaktoften 2, Trørød 2950, Vedbæk, Denmark (opponent), represented by DLA Piper Denmark Law Firm P/S, Raadhuspladsen 4, 1550 Copenhagen V, Denmark (professional representative)

a g a i n s t

Alice Pilcher Merchandising UG (haftungsbeschränkt), Am Königsberg 3, 82211 Herrsching, Germany (applicant), represented by Heussen Rechtsanwaltsgesellschaft mbH, Brienner Str. 9 / Amiraplatz, 80333 München, Germany (professional representative).

On 28/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 953 738 is upheld for all the contested goods, namely

Class 18: Leather and imitation leather; Animal skins and hides, luggage and carrying bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery; Collars, leaches and blankets for animals, beach bags, pocket wallets, calendars, briefcases, pen cases, key cases, handbags, cosmetic bags, shopping bags, backpacks.

Class 25: Clothing; Footwear, Headgear, Scarves and headscarves, Caps, Beach clothes, Beach shoes, Hats, Knits, Scarves, Slippers, Waist belts, Mackintoshes, Bow ties, Braces for clothing [suspenders], Gloves [clothing].

2. European Union trade mark application No 16 489 321 is rejected for all of the contested goods. 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 of European Union trade mark application No 16 489 321 ‘Rosamunde Pilcher’ (word), namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, European Union trade mark registration No 10 032 621 ‘ROSEMUNDE’ (word).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.

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 10 032 621.

1. The goods

After the limitation of the basis of the opposition by the opponent on 26/01/2018, the goods on which the opposition is based are the following:

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

Class 25: Clothing, footwear; headgear.

The contested goods are the following:

Class 18: Leather and imitation leather; Animal skins and hides, luggage and carrying bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery; Collars, leaches and blankets for animals, beach bags, pocket wallets, calendars, briefcases, pen cases, key cases, handbags, cosmetic bags, shopping bags, backpacks.

Class 25: Clothing; Footwear, Headgear, Scarves and headscarves, Caps, Beach clothes, Beach shoes, Hats, Knits, Scarves, Slippers, Waist belts, Mackintoshes, Bow ties, Braces for clothing [suspenders], Gloves [clothing].

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 18

The contested leather and imitation leather; animal skins and hides, luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery are identically contained in the opponent’s list of goods in Class 18 (including synonyms).

The contested collars, leaches are included in the broad category of the opponent’s harness. Therefore, they are identical.

The contested beach bags; briefcases, handbags, cosmetic bags, shopping bags, backpacks are similar to the opponent’s travelling bags because they have the same nature, manufacturers and purpose (i.e. to carry goods). They can coincide in end users and distribution channels.

When comparing the contested pocket wallets, calendars, pen cases, key cases which can all be made of leather, with the opponent’s vague term goods made of leather without further examples or an express limitation by the opponent clarifying the term, it cannot be assumed that they have the same purpose, that their methods of use coincide, or that they share the same distribution channels or whether they are in competition or complementary. However, their nature can be considered the same as they are leather goods and it is reasonable to assume that the goods may be produced by the same companies, given that the required knowhow and machinery (i.e. to cut leather) may also be the same. Therefore, these goods can only be found similar to a low degree.

The contested blankets for animals include blankets for horses which may be manufactured by the same undertakings as the opponent’s whips, harness and saddlery. The goods coincide in end users and distribution channels. They are considered similar to a low degree.

Contested goods in Class 25

Clothing; footwear, headgear are identically contained in both list of goods.

The contested scarves and headscarves, beach clothes, knits, scarves, mackintoshes, gloves [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested waist belts, bow ties, braces for clothing [suspenders] are articles of clothing inasmuch as they are classified in Class 25 of Nice Classification. Therefore, they are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested caps, hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested beach shoes, slippers are included in the broad category of the opponent’s footwear. Therefore, they are identical.

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 and similar to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

ROSEMUNDE	Rosamunde Pilcher
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).

Since the signs under comparison are both word marks and protection is sought for the word as such and not its written form, differences in the use of lower or upper case are immaterial.

The contested mark ‘Rosamunde Pilcher’ will be perceived by the relevant public as a female first name and surname. ‘Rosamunde’ is, however, not a commonly used name in the relevant territory, and is likely to be perceived as unusual name of foreign origin by the significant part of the public in the relevant territory. Actually, neither the first name ‘Rosamunde’ nor the surname ‘Pilcher’ are common in the significant part of the relevant territory. None of these elements has a higher distinctive character than the other.

Likewise, the word element of the earlier sign ‘Rosemunde’ will be perceived as an unusual female name, a name variant of ‘Rosamunde’, both deriving from the same root. It is considered distinctive for the goods at hand.

The marks have no elements that could be considered dominant (visually eye-catching).

Visually and aurally, the signs coincide in the letters/sound ‘ROS*MUNDE’ and differ in letters ‘A’ vs. ‘E’, placed in the middle, as well as the word ‘Pilcher’ of the contested sign.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the same female first name, the signs are similar to an average degree.

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 previous sections of the present decision, that the contested goods are identical and similar to various degrees to the opponent’s goods. It has also been concluded that the signs under comparison are visually, aurally and conceptually similar to an average degree. The earlier sign has normal distinctiveness.

The only verbal element of the earlier mark is almost identically reproduced in the contested sign. The two words ‘Rosemunde’ and ‘Rosamunde’ share the majority of their letters: the difference in the letters ‘A’ vs. ‘E’ is not sufficient to counteract this strong similarity since it can be easily overlooked by the relevant public, due to its position in the middle of the coinciding element. In that regard, account is 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 (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Moreover, the signs are closely linked conceptually as they both evoke the concept of a variation of the same name.

Thus, the essential difference between the signs is due to the presence of an additional element in the contested sign that is ‘Pilcher’. It should be, however, pointed out that when a first name is likely to be perceived as uncommon in the relevant territory, the presence of this uncommon element is likely to focus the consumers’ attention and they could be misled into attributing a common origin to the goods concerned.

Bearing in mind that the earlier mark is almost identically reproduced in the contested sign, that it will be perceived as a separately identifiable element due to its meaning, and that it is furthermore of a normal degree of distinctiveness for the goods found to be identical and similar to various degrees, it is concluded that the relevant public could believe that the goods in question come from the same undertaking or economically linked undertakings.

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 10 032 621. It follows that the contested trade mark must be rejected for all the contested goods. This conclusion stands also for the contested goods which have been found similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the goods which only have a low degree of similarity.

As the earlier right European Union trade mark registration No 10 032 621 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Begoña URIARTE VALIENTE

Anna BAKALARZ

Katarzyna ZANIECKA

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.