OPPOSITION No B 3 033 456

Lilly A/S, Bugattivej 2, 7100, Vejle, Denmark (opponent), represented by Plesner, Amerika Plads 37, 2100, Copenhagen Ø, Denmark (professional representative)

a g a i n s t

Concordia Media Group, Jarzębinowa 10, 05-077, Warszawa, Poland (applicant).

On 12/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 033 456 is upheld for all the contested goods, namely:

Class 25: Hats; clothing; printed t-shirts.

2. European Union trade mark application No 16 567 422 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 567 422 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 580 282 for the word mark ‘LILLY’. With regard to this earlier right, the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. The opposition is also based on a non-registered trade mark ‘LILLY’ (word mark) used in Denmark, in relation to which the opponent invoked Article 8(4) 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.

a) The goods

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

Class 25: Religious and festive occasions clothing, footwear and headgear.

The contested goods are the following:

Class 25: Hats; clothing; printed t-shirts.

The contested clothing and printed t-shirts include, as broader categories, or overlap with, the opponent’s religious and festive occasions clothing. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested hats overlap with the opponent’s religious and festive occasions headgear. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

b) 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. The degree of attention is considered average.

c) The signs

LILLY
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 mark is a word mark composed of the element ‘LILLY’. The contested sign is a figurative mark, in which the same element appears in slightly stylised upper case pink letters. To the left and right of this element appear two small figurative ornaments, in shades of yellow, which will possibly be recognised as stylised butterflies. Under the element ‘LILLY’, and in much smaller typeface, appear the conjoined verbal elements ‘GOOD’ and ‘NEWS’, in different shades of yellow.

The verbal element ‘LILLY’, contained in both signs, will be understood throughout the European Union as a female given name or nickname (e.g., a shortened version of names such as Liliana, Lilliane, Lilia, etc.). This element has no descriptive or allusive meaning in relation to the relevant goods and is, therefore, considered normally distinctive.

The additional conjoined expression ‘GOOD NEWS’, contained in the contested sign, will be understood by a substantial part of the relevant public (all consumers with at least a minimal knowledge of English) as a reference to ‘something that will be useful or helpful to you’ or simply, and more generically, as ‘information about a positive/optimistic recent event or situation’. The different shades of yellow used to depict these words will facilitate their immediate recognition. Nonetheless, for another part of the public, these verbal elements will be meaningless. In both cases, the inherent distinctiveness of these elements is considered to be average, as they bear no relation to the relevant goods.

The verbal element ‘LILLY’ is the dominant (visually eye-catching) element of the contested sign because, due to its considerably larger size and central position, it overshadows the remaining verbal and figurative elements of the sign.

Visually, the signs coincide in the verbal element ‘LILLY’ which comprises the entire earlier mark and the dominant element of the contested sign. The signs differ in the aforementioned additional verbal and figurative elements of the contested sign and in overall stylisation and colours.

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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the public will not pay much attention to the figurative component and stylisation of the contested sign. In addition, due to its considerably smaller size and position, the expression ‘GOOD NEWS’ plays only a secondary role in the sign and will not have a significant impact for consumers. Instead, for the reasons explained above, the relevant public will focus its attention on the initial and dominant element of the mark, ‘LILLY’, which will be perceived as the main indicator of commercial origin contained in the sign.

Consequently, considering that the dominant element of the contested sign reproduces entirely the earlier mark, ‘LILLY’, and that this element is portrayed in the visually most conspicuous part of the contested sign (its beginning, since the public reads from top to bottom), it is concluded that the signs are similar to a high degree.

Aurally, the first element of the contested sign and the earlier mark will be pronounced identically. The pronunciation differs in the sound of the additional verbal elements of the contested sign, ‘GOOD NEWS’. The Opposition Division deems that a considerable part of the public will not pronounce these elements when faced with the sign, due to their small size and position. For that part of the public, the marks are aurally identical.

For the remaining consumers, in view of the aural coincidence between the first element of the contested sign and the earlier mark, the signs are similar to an average degree.

Conceptually, as explained above, the element ‘LILLY’ contained in both signs will be associated with the same feminine name/nickname. The verbal elements ‘GOOD NEWS’ of the contested sign will be perceived as a meaningful expression by a part of the public, as previously covered; for another part, they are meaningless. The figurative elements of the contested sign will be perceived as mere decorative shapes and may be associated with stylised butterflies by a part of the public.

Considering the overall impression conveyed by the contested sign, it is clear that the remaining meaningful elements contained therein – even if fully understood – do not detract significantly the public’s attention from the dominant central element ‘LILLY’, which will be perceived as the main badge of origin of the relevant goods.

Therefore, considering that the signs will be linked with the same female first name, and that this name constitutes an independent distinctive element in both marks, as well as the dominant element in the contested sign, they are considered conceptually similar to at least 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.

d) 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

e) Global assessment, other arguments and conclusion

The contested goods in Class 25 are identical to the goods covered by earlier European Union trade mark registration No 580 282.

The earlier mark is distinctive to an average degree.

The signs under comparison are visually highly similar, aurally identical or similar to an average degree and conceptually similar to at least an average degree, on account of the coincidences between the initial verbal element of the contested sign, ‘LILLY’, which fully reproduces the earlier mark.

It must be noted that according to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

As seen above in section c) of this decision, the relevant consumers will not pay much attention to the figurative and stylisation features of the contested sign, because they will be perceived as standard graphic means of bringing the verbal elements in question to their attention. In addition, consumers will focus their attention essentially on the dominant element ‘LILLY’, portrayed centrally in large letters, as they will perceive it as the main indicator of commercial origin contained in the sign. Therefore, in the present case, it is decisive that the similarity between the signs lies in the initial, dominant and independent verbal element ‘LILLY’ of the contested sign, which fully reproduces the earlier mark, ‘LILLY’.

Bearing in mind that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind, the Opposition Division considers that the similarities between the marks under comparison are sufficient to lead to a likelihood of confusion.

In addition, Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested sign denotes a new brand line of goods provided under the opponent’s mark, since the creation of sub-brands or new lines of products is common in the fashion sector and is often carried through the addition of new verbal and/or figurative elements to the original brand.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, 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 580 282. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation, as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 580 282 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and 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 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

Rosario GURRIERI	Gueorgui IVANOV	Jakub MROZOWSKI

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.