OPPOSITION No B 2 958 026

Peter Kertels, Jean-Monnet-Str. 6, 54343 Föhren, Germany (opponent), represented by Patentanwalt Dr.-Ing. Jörg Wagner, Trierpatent, Monaiser Str. 21, 54294 Trier, Germany (professional representative)

a g a i n s t

Ley Tricot S.R.L., Via Majorana 4, 41012 Carpi, Italy (applicant), represented by Bugnion S.P.A., Via Vellani Marchi, 20, 41124 Modena, Italy (professional representative).

On 10/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 958 026 is rejected in its entirety.

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

REASONS

On 15/09/2017, the opponent filed an opposition against all the goods of European Union trade mark application No 16 811 408 (figurative mark). The opposition is based on European Union trade mark registration No 14 653 711 . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 08/10/2020, long after the opposition period ended, the opponent submitted further facts and arguments, in which it cited an additional earlier right, not invoked in the Notice of Opposition initially filed, and with which the opponent intended to broaden the basis of the opposition.

As the applicant correctly claimed, this additional earlier right cannot be taken into account, since it was invoked after the opposition period. The Opposition Division cannot grant the broadening of the basis of the opposition, and will, therefore, proceed with the examination of the opposition based on the European Union trade mark registration No 14 653 711, as above.

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 3: Perfumery, essential oils, cosmetics, soaps, all of the aforesaid goods being for the cosmetics sector, massage liquids included in Class 3; toiletries; cleaning and fragrancing preparations; animal grooming preparations; essential oils and aromatic extracts.

Class 5: Lubricants and massage fluids for medical purposes; lubricants for human use; dietary supplements and dietetic preparations; hygienic preparations and articles; medical and veterinary preparations and articles.

Class 10: Medical instruments and apparatus (included in Class 10), artificial limbs, hygienic rubber goods for medical use (included in Class 10), condoms, massage apparatus, vibrators for personal use; erection- and orgasm-enhancing devices, namely love balls, penis rings, potency pumps and potency rings, all the aforesaid goods included in Class 10; love dolls (erotic articles) and love swings (erotic articles) for sex games (included in class 10); physical therapy equipment; medical and veterinary apparatus and instruments; prosthetics and artificial implants; sex aids.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 18: Casual bags; handbags; pouch baby carriers; wallets; purses; satchels; valises; trunks [luggage]; keycases; backpacks; umbrellas; walking sticks; slings for carrying infants; vanity cases, not fitted; briefbags; garment bags for travel; moleskin [imitation of leather]; card cases [notecases]; attache cases; traveling trunks.

Class 25: Clothing; shoes; hats; sweaters; sweaters; jumpers; parkas; jackets [clothing]; suits; shirts; trousers; albs; underwear; robes; skirts; swimming trunks; boxer shorts; gowns; coats; topcoats; mackintoshes; brassieres; briefs; bodices [lingerie]; corsets; corselets; robes; tights; socks; leg warmers; pelerines; ponchos; shawls; sashes for wear; neckties; gloves [clothing]; belts [clothing]; braces for clothing [suspenders]; goloshes; gymnastic shoes; boots; sandals; maillots [hosiery]; hosiery; sweaters; cardigans; bathrobes; caps [headwear]; berets; underwear; smocks; footwear; stockings; slippers; breeches; hoods [clothing]; detachable collars; ear muffs [clothing]; beachwear; linings (ready-made -) [parts of clothing]; mittens; singlets; leg warmers; muffs [clothing]; skorts; pyjamas; cuffs; stocking suspenders; brassieres; outerclothing; dress shields; knee-high stockings; petticoats; slips [underclothing]; half-boots; fur stoles; tee-shirts; combinations [clothing].

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Some of the contested goods are identical or similar to goods on which the opposition is based, for example, the contested hats; caps [headwear]; berets are included in the opponent’s broad category of headgear. Therefore, they are identical. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at professionals. The degree of attention paid during their purchase is deemed to be average.

c) The signs

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 parties have argued about possible concepts being attributed to the marks’ verbal elements ‘Lylou’ and ‘Ley Lu’. However, the Opposition Division considers that for the vast majority of consumers in the relevant territory, despite the language they speak, the verbal elements ‘Lylou’ and ‘Ley Lu’ are meaningless. Therefore, these elements will not contribute to distinguishing the signs on a conceptual level.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this significant part of the public, for whom the verbal elements ‘Lylou’ and ‘Ley Lu’ are meaningless and of average distinctive character, as this is the most advantageous scenario for the opponent, as it is the most probable scenario in which likelihood of confusion could arise.

The verbal component ‘Milano’ in the contested sign will be perceived by the public in the relevant territory as the name of the Italian city of Milan, either because they are aware of it or use the word as such (e.g. in Italian or Romanian), or because they use similar equivalents that will bring the same concept to mind (e.g. ‘Milán’ in Spanish and ‘Milan’ in English or French). This word is used to indicate the place where goods (especially those in Classes 18 or 25) are designed or produced. Therefore, this word is, at best, distinctive to a low degree for the goods at issue.

The verbal element of the contested mark is depicted in a handwritten font. The component ‘Ley Lu’ is larger than, and positioned above, the verbal component ‘Milano’. The verbal element ‘Ley Lu’ is dominant (visually eye-catching).

The earlier mark comprises the verbal element ‘Lylou’, depicted in a pink font, and a figurative element (see description of the sign in the conceptual comparison below). Taking into account the kind of goods, this device is of average distinctive character, since it is a complex image with no clear relation to them.

The earlier mark has no elements more dominant (visually eye-catching) than others. However, 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). Therefore, the verbal element ‘Lylou’ has a greater impact on consumers.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Although the signs coincide in their first letter, ‘L*’, the rest of the letters are in a different sequence, are depicted in very different fonts and colours, and the verbal components occupy different positions within the marks. Therefore, despite there being a visual coincidence, it is not striking.

Visually, the signs coincide in their first letter, ‘L*’, and their last letter, ‘*u’. They also share the letters ‘*y*’ and additional letter ‘*l*’.

The signs differ in the positions of the coinciding letters ‘*y*’ and ‘*l*’ within the signs. In addition, the earlier mark comprises one verbal element and a figurative element, whereas the contested sign comprises three verbal components. They also differ completely in font and colour. Furthermore, they differ in the verbal element ‘Milano’ of the contested sign, which has no counterpart in the earlier mark, and in the letters ‘*o*’ of the earlier mark and ‘*e*’ of the contested sign.

Therefore, the signs are visually similar to a low 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 ‘L*’, ‘*yl*’ and ‘*u’. However, as explained above, the coinciding ‘*y*’ and ‘*l*’ do not occupy the same position in both marks.

The signs differ in the sound of the letters ‘*o*’ of the earlier mark and ‘*e*’ of the contested sign, as the earlier mark is pronounced as one verbal element, whereas the contested sign is pronounced as two or three verbal components, depending on the sound of the word ‘Milano’, which, despite being at best weak, will be pronounced at least by part of the public.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The figurative element of the earlier mark reflects the concepts of the various components comprising it (the mirrored image of two women sitting on what the opponent refers to as two ‘L’ letters or columns). Above these letters/columns is a crown, and the whole ensemble of components is placed above curved lines. The figurative element as a whole is depicted in a gold colour. This element can be easily perceived by all consumers, as can the concept of the verbal element ‘Milano’ in the contested sign. Therefore, the signs are not associated with similar meanings and, therefore, they are not conceptually similar.

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.

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.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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 considerable visual differences between the signs are particularly relevant when assessing the likelihood of confusion between them.

Despite the verbal elements coinciding in some letters, the signs contain sufficient dissimilarities, as seen in the previous sections (leading to, inter alia, a low degree of visual similarity), to exclude a likelihood of confusion. Even when considering the goods in question, and the part of the public analysed, for whom the verbal elements ‘Lylou’ and ‘Ley Lu’ are meaningless and distinctive, there are sufficient dissimilarities. In this case, the identity of the goods is not capable of counteracting the low visual similarity of the marks, and all the differences between them, as described in section c) of this decision.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion also applies to the part of the public for who the verbal elements ‘Lylou’ and/or ‘Ley Lu’ have a concept, since from this perspective, the signs will contain further conceptual differences and these consumers will perceive the signs as being even less similar.

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, he 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, 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

Irena LYUDMILOVA LECHEVA

María del Carmen SUCH SANCHEZ

Vít MAHELKA

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.