OPPOSITION No B 2 973 702

Hachette Filipacchi Presse, 3/9 Avenue André Malraux Immeuble Sextant, 92300 Levallois Perret, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative)

a g a i n s t

Francesco Ambrosio Via Pianillo 77, 80047 San Giuseppe Vesuviano, Gennaro Ambrosio Via Pianillo 77/8, 80047 San Giuseppe Vesuviano, Luca Ambrosio, Via Pianillo 77/8, 80047 San Giuseppe Vesuviano, Italy (applicants), represented by Dott. Franco Cicogna & C. Srl, Via Visconti di Modrone 14/A, 20122 Milano, Italy (professional representative).

On 14/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 973 702 is partially upheld, namely for the following contested goods:

Class 3: Cleaning and fragrancing preparations; Essential oils and aromatic extracts; Toiletries.

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Jewellery boxes and watch boxes; Key rings and key chains, and charms therefor; Time instruments; Jewels.

Class 18: Luggage, bags, wallets and other carriers; Umbrellas and parasols; Walking sticks.

Class 22: Padding and stuffing materials; Raw textile fibers and substitutes.

Class 23: Yarns and threads.

Class 24: Fabrics; Filtering materials of textile; Textile goods, and substitutes for textile goods.

Class 25: Clothing; Footwear; Headgear.

Class 26: Accessories for apparel, sewing articles and decorative textile articles; Artificial fruit, flowers and vegetables; Charms [not jewellery or for keys, rings or chains]; Hair ornaments, hair rollers, hair fastening articles, and false hair; needles and pins for entomology.

2. European Union trade mark application No 16 935 421 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 935 421 . The opposition is based on French trade mark registration No  158 677 for the word mark ‘ELLE’, on European Union trade mark registrations No 3 566 734, No 10 910 958, No 3 475 365 and on international trade mark registration No 546 813 designating the European Union ‘ ’, in relation to which the opponent invoked Article 8(1)(b) EUTMR. The opponent also invoked Article 8(5) EUTMR in relation to European Union trade mark registration No 3 475 365.

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 applicant requested that the opponent submit proof of use of European Union trade mark registrations No 3 566 734, No 3 475 365 and of international trade mark registration No 546 813 designating the European Union on which the opposition is based.

The date of filing of the contested application is 29/06/2017. The opponent was therefore required to prove that the above mentioned trade marks on which the opposition is based were put to genuine use in the European Union from 29/06/2012 to 28/06/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

European Union trade mark registration No 3 566 734:

Class 18: Leather goods and luggage of all kinds, including bags; wallets; umbrellas and parasols.

Class 24: Fabrics; household linens; toilet and bath linen.

Class 25: Clothing in general; footwear.

European Union trade mark registration No 3 475 365:

Class 16: Periodicals.

Class 35: Advertising, in particular by means of advertorials, for others, by means of co-branding operations, by means of the sale and/or rental of display stands, placards and printed and/or electronic promotional media, for the promotion of miscellaneous goods and services, in particular in the fields of fashion (fashion articles and fashion accessories, styling, fashion shows), beauty and hygiene (cosmetics, soaps, perfumery preparations, hygiene preparations, beauty care).

International trade mark registration designating the EU No 546 813:

Class 3: Beauty products and cosmetic products, perfumery products, toilet soaps.

Class 26: Lace and embroidery, ribbons and braid including bows for the hair; pins and needles including hair pins and grips.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 06/06/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 11/08/2018 to submit evidence of use of the earlier trade marks. This time limit was extended until 06/10/2018. On 05/10/2018, within the time limit, the opponent submitted evidence of use.

Also, on 01/03/2018, the opponent, in support of its claim that its European Union trade mark registration No 3 475 365 is reputed for periodicals in Class 16, submitted the following evidence which has to be taken into account and which is listed below:

• Exhibits 1 and 2: decisions from the Opposition Division 21/02/2011, B 1 635 708 and 25/10/2010, B 1 408 113.

• Exhibit 3: printout from the cover page of the periodical ‘ELLE’ dated 21/11/1945. The sign is depicted as follows: .

• Exhibit 4: timeline of the opponent’s development, extracted from the opponent’s website, and showing when the periodical was launched in different countries, France being the first one in 1945, and the UK the second (European) one in 1985.

• Exhibit 5: undated study (the opponent indicates that it is dated 2014), saying that the mark ‘ELLE’, was the world’s biggest selling fashion magazine, with 6.6 million copies sold per month.

• Exhibit 6: article published in the French newspaper ‘L’Expansion’ in July/August 2007, in which the prior trademark was evaluated at some EUR 255 million.

• Exhibit 7: decision issued by the Utrecht Commercial court (the Netherlands) (with its translation), dated 2006, where it is stated that ‘it is not disputed that the trademark ELLE used by Hachette is very well known among a sizeable public, in particular because of the magazine Elle’.

• Exhibit 8: judgement of the Cour d’Appel de Versailles (France) dated 16/04/2013. It is stated (translation provided by the opponent) that ‘The “ELLE” mark is renowned ant its notoriety was initially linked to the magazine of the same name which has become a reference in the world of fashion and beauty but which today covers very diversified activities, through its business partnerships the launch of its own collections, beauty products and treatments for women’.

• Exhibit 9: undated brochures and ‘ELLE’ magazine’s cover pages dated 2016, in which the brands ‘ELLE’ and ‘ELLE SPORT are used in relation to clothing.

• Exhibit 10: judgment issued by the Court of appeal of Brescia (Italy) in Italian on 25/05/2005, acknowledging the opponent’s mark’s reputation.

• Exhibit 11: ‘ELLE’ periodical cover pages, dated 1945 (the inaugural issue of the newspaper), 1995 and 2005 (as the cover pages celebrate the 50th and 60th anniversary). The exhibit also contains evidence of the 70th anniversary of the brand in 2015, for which a book was edited and a walk-in museum of its famous covers hosted on the Champs-Elysées with free public access.

• Exhibits 12-13: list of the opponent’s trade mark portfolio in 2017.

• Exhibit 14: cover page of ‘TIME’ magazine in 1992 where the opponent’s mark is visible.

• Exhibit 15: cover page and extracts from the newspaper ‘THE TELEGRAPH’, dated 2013, which consists of a portrait of the editor in chief of the magazine ‘ELLE’. The magazine ‘ELLE’ is described as the world’s most commercially successful fashion magazine.

• Exhibit 16: article dated 01/02/2011 and published in ‘The Wall Street Journal’, regarding the sale of publishing rights of ‘ELLE’.

• Exhibit 17: advertisement leaflet published by the opponent and dated April 2016, where it is claimed that 10 million people read the magazine.

• Exhibit 18: internal document dated 2012 where it is stated that the prior trademark is intensively used as evidenced by the figures: 9.6 million copies sold worldwide and more than 33 million readers. Internal documents showing the international expansion of ‘ELLE’ and listing the countries where it is sold, with the date of the launch and the circulation figures.

• Exhibits 19-22: internal document listing the countries where ‘ELLE’ is sold with the number of copies sold per country in 2009, in 2012/2013, in 2013-2014 and in 2015 and the number of readers. In total, there are 42 editions.

• Exhibit 23: Figures regarding the numbers of visitors to the opponent’s websites.

• Exhibits 24-25: cover page and some printouts of the ‘ELLE FASHION BOOK 2011’, and other lifestyle magazine, such as ‘ELLE DECORATION’, ‘ELLE CUISINE’ etc. According to the opponent’, the earlier mark represents more than 144 supplements and 53 spin-offs worldwide.

• Exhibits 26-27: internal document showing the launch of the ‘ELLE’ small electrical appliances by Beurer and advertisements of ‘ELLE’ sportswear, footwear and hair ornaments. Photography of one stand showing a few earrings and necklaces from ‘ELLE’.

• Exhibit 28: document showing that the turnover of ‘ELLE’ between 2005 and 2012 is on average of EUR 800,000,000 per year and that the promotional expenses during the same period are on average of EUR 35,000.000 per year.

• Exhibits 29-35: documents (e.g. surveys, French periodicals and numerous awards) from independent sources stating that ‘ELLE’ magazine is recognized as a well known trade mark. In 1996, the earlier mark was classified in ‘The World’s Most Powerful Brands’ among the 300 most well known trade marks in Europe by Landor Associates.

• Exhibits 36-38: exhibits referring to decisions where the opponent’s mark was found reputed (two decisions of the Opposition Division, namely 24/04/2007, B 841 470, 10/11/2010, B 1 473 000 and one from the French Court of Paris, 09/02/2010, RG 09/10263).

Moreover, as already indicated above, on 05/10/2018, in order to demonstrate to use of its trademarks, the opponent provided the following additional documents:

Items 01/01 to 8:

• Copy of a licence agreement in English, dated 16/12/2009 between the opponent and Kamani Design Ltd according to which the licensee has been granted the right to use the ‘ELLE’ trademark and logo accompanied with the word ‘SPORT’, in connection with the manufacture, distribution and sale of sportswear for women in the United Kingdom, the Isle of Man, the Channels Islands and Irelands.

• Catalogues from the licensee published in Ireland in 2012 and 2015; extracts from www.ellesport.co.uk dated 2017 from www.kamani.co.uk; advertisements published according to the opponent in the UK edition of the ‘ELLE’ magazine in November 2012, in April, May and June 2015 and in March and September 2016; all of these items selling or advertising women sportswear such as sport jacket, tank, support bra, top, tight bearing the sign .

• Tables showing the sales of ‘ELLE’ goods by Kamani in 2015 which in total amounts to more than three millions pounds.

Items 9 to 14:

• Copy of a licence agreement in French, dated 10/06/2015 between the opponent and the company Cyrillus. No translation is submitted. Nevertheless, according to the opponent, the agreement is in relation to the use of the trademark ‘ELLE’ for prêt à porter clothes for girls in France, Belgium, Switzerland, Germany and Luxembourg.

• Catalogue and advertisement (of 2016) from ‘ELLE – Cyrillus’; window dressing of the Cyrillus shops of 2016 and 2017; extract from www.cyrillus.fr; all of these items dedicated to the collection of children clothing.

• Tables showing the sales of ‘ELLE’ goods by Cyrillus in 2016 which in total amounts to more than EUR 180,000 for France.

Items 15 to 20:

• Copy of a licence agreement in French, dated 16/05/2013 between the opponent and the company Dresco. No translation is submitted. Nevertheless, according to the opponent, the licence is in relation to the use of the trademark ‘ELLE’ for women shoes in Belgium, Luxembourg, United Kingdom, The Netherlands and France.

• ‘ELLE’ shoe catalogue of 2015, advertisements published in the Dutch edition of in 2014; ELLE advertising plan for Italy, Spain and the Netherlands; all of them displaying a wide range of shoes that according to the opponent, are manufactured by Dresco.

• Several invoices in French issued by ‘Dresco’ to wholesalers in Belgium, Luxembourg, United Kingdom, Germany and France between 2014 and 2016 for ‘ELLE’ shoes for amounts running from EUR 1,036 to EUR 55,000 approximately and Dresco sales report for 2015 of the ‘ELLE’ line of shoes amounting to more than one million euros.

Items 21 to 26:

• Copy of a licence agreement in French, dated 03/10/2012 between the opponent and the company New Caroparis. No translation is submitted. Nevertheless, according to the opponent, the licence is in relation to the use of the ELLE trademark for ‘small leather goods: wallets, purses, check book holders and different kind of bags’ in France, Italy, Belgium, Spain, Luxembourg and the Netherlands.

• /New Caroparis catalogue of 2014 for handbags, pouches, purses, wallets and newsletters announcing the launch 2013/2014 fair showcasing the first bags collection.

• New Caroparis sales report for Europe and more countries for the period July to November 2013 for a total amount of approximately EUR 170,000. In 2014 the total was approximately of EUR 400,000.

Items 27 to 30:

• Copy of a licence agreement in French, dated 03/05/2016, between the opponent and the company SPBI. No translation is submitted. Nevertheless, according to the opponent, the licence is in relation to the use of the ELLE trademark for yacht bag/cases containing tableware, table linen, kitchen accessories and outdoor accessories in 21 Member States including France, Italy, Benelux, etc.

• yacht cases published in the Bénéteau catalogue (the world number one sailboat builder).

• Sales of ELLE yacht cases from 14/10/2014 to 14/12/2017 for a total of approximately EUR 150,000.

Items 31 to 34:

• Copy of a licence agreement in English, dated 28/01/2015, between the opponent and the company Merison Groep BV granting the right to use the ‘ELLE’ trademark for the manufacture, distribution and sale of table and kitchen textile in the Netherlands, Belgium, United Kingdom and France.

• /Merison catalogue of 2016 distributed in Germany, Austria, Poland, the Netherlands, United Kingdom and Ireland, showing a wide range of kitchenware, tableware and kitchen textile such as plates, mugs, bowls, coffee set, cake stand, glasses, forks, chopsticks, placemats, napkins, towels and aprons.

• Merison sales report for tableware in 2017 for Germany, Croatia, the Netherlands and Slovenia for total of approximately EUR 70,000.

Items 35 to 42:

• Copy of a licence agreement in English, dated 24/03/2011, between the opponent and the company Linum AB granting the right to use the ‘ELLE’ trademark for the manufacture, distribution and sale of table linen, coated fabrics and cushion covers in France, Italy, Belgium, etc.

• /Linum decoration catalogue of 2012/2013 for table linen and cushions; promotions of ‘ELLE’ toilet and bath linen for the subscription to the ELLE magazine during the period 2013-2017.

• Two invoices in French issued by Linum to customers in France on 05/02/2012 and 31/07/2013 for an amount of EUR 2,900 and EUR 3,400, respectively.

Items 43 to 47:

• Copy of a licence agreement in French, dated 16/05/2011, between the opponent and the company Delsol. No translation is submitted. Nevertheless, according to the opponent, the licence authorizes the use of the ‘ELLE’ trademark for hair ornaments and hair accessories in France, Belgium and Luxembourg.

• /Delsol catalogue for hair ornaments and cosmetic accessories and extract from www.elleboutique.eu showing hair ornaments (hair bands, bandeau, scrunchies, elastic hair bands, grips) as well.

• Delsol sales report for France and Portugal in 2013 for a total of approximately EUR 1,800,000; invoices in French issued by Delsol to customers in France for a wide range of cosmetic and toilet utensils, such as hair bands, bandeau, scrunchies, elastic hair bands, grips between November 2012 and May 2017 for a total amount of approximately EUR 11,500.

Items 48 to 54:

• Copy of a licence agreement in French, dated 25/07/2013, between the opponent and the company Maesa. No translation is submitted. Nevertheless, according to the opponent, the licence authorizes the use of the ‘ELLE’ trademark for cosmetics in France, Italy, Spain, etc.

• Press clip, advertisements and casting campaign in relation to the collection of make up. Some of these were published in 2014, 2015 and 2017.

• Maesa sales report for make up corresponding to the period September 2014 – January 2017 for France and to the period July 2016 – January 2017 for Italy, for an amount of approximately EUR 1,500,000.

Items 55 to 60:

• Copy of a licence agreement in French, dated 12/05/2014, between the opponent and the company PB Licence (Group Berdoues). No translation is submitted. Nevertheless, according to the opponent, the licence authorizes the use of the trademark for perfumes and eaux de toilette for girls and boy in France, Italy, Spain, etc.

• Advertisements and press clips in relation to the ELLE kid and teen collection of perfumes published in France and in Italy in 2015 and 2016.

• PB Licence sales report of ELLE perfumes for France that amounts to approximately EUR 840,000 in 2015 and EUR 860,000 in 2016.

Items 60 to 67:

• Dossier showing the presence of the magazine in Europe and also around the world since 1945. In France there were ten million prints and digital readers in 2015. In Italy, the magazine reached 525.000 readers monthly and it is the leader in circulation among its competitive set. In Spain, the magazine reached 642.000 readers monthly.

• Dossiers for France, Italy and Spain showing that the magazines are also used for advertising purposes since many companies use the magazine to advertise their goods. Different advertising support are offered: printed, web, social networks, mobile or through events. The advertising rates for advertisements in the French ELLE magazine corresponding to 2015 and 2016 are also indicated. As an example, the cost of a single page in 2016 was of EUR 32,000. According to the dossier, ‘ELLE’ ‘is the most invested-title amongst the upscales titles in France with 3894 advertising pages’ (Kantar Media Magtrack 2015). A batch of advertisement from different commercial origin published in the ELLE magazine is also submitted.

• Figures from the company Kantar media magtrack showing that ELLE was in the first position (30%) in advertising expenses compared to its competitors in 2016.

On 13/05/2019, after expiry of the time limit, the opponent submitted additional evidence.

In the present case, the belated evidence concern the use of the earlier trade mark in relation to ‘periodicals’. The issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence submitted on 13/05/2019 can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier European Union trade mark No 3 475 365 for ‘periodicals’ as explained in detail below.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, together with the evidence of use submitted on 05/10/2018, the opponent also submitted a writing with full explanations that completes the evidence. Therefore, the Opposition Division considers that there is no need to request a translation.

The applicant also contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Consequently, since the evidence filed by the opponent emanate both from the opponent and from the authorized licensees, it is clear that use has been made with the consent of the proprietor. Therefore, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant further argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Place of use

The licence agreements signed for the use of the ‘ELLE’ trademark in specific countries such as United Kingdom, France, Belgium, Germany, Luxembourg, Italy, Spain, etc., the catalogues or advertising material published in the ‘ELLE’ edition of some of these countries and the sales reports or the invoices issued to customers located in some of these countries show that the place of use is the European Union. Therefore, the evidence relates to the relevant territory.

Time of use

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well.

In the present case, some of the licence agreements are dated before the relevant period but all of them are valid for several years, thus, coinciding with the relevant period and showing that the earlier trade marks have been in use for a longer period. The rest of the evidence confirms the above because most of it is dated during the relevant period. Some other documents are also dated outside the relevant period, such as one invoice under items 35 to 42, nevertheless, it is dated relatively close to the relevant period (three months before) and it is also accompanied by another invoice dated during the relevant period, thus showing a continued use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The significant circulation numbers of the magazine, the number of advertisements published, the sales reports and the invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Indeed, it is clear that the magazine reached millions of readers and that it is used as an advertising support by many companies. As regards the rest of the goods for which the earlier trade marks are registered, the sales reports and the invoices show that the amount corresponding to sales of the trademark ‘ELLE’ products is of several thousand euros or even several million euros for relatively short periods of time such as, years 2015 or 2016 only or from July 2016 to January 2017.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier marks.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The earlier trade marks have been used under the following forms or ‘ELLE’. Therefore, the evidence shows that the mark has been used in accordance with its function and as registered.

Conclusion

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade marks for women sportswear, clothing, footwear; handbags, pouches, purses, wallets, yacht cases containing tableware, table linen, kitchen accessories and outdoor accessories; kitchenware, tableware and kitchen textile; table linen and cushions; hair bands, bandeau, scrunchies, elastic hair bands, grips; make-up, perfumes, eaux de toilette; advertising and periodicals.

Therefore, the evidence shows genuine use of the trade marks for the following goods and services that are either specifically mentioned in the list of goods and services of the marks as registered or that belong to subcategories of those specifically mentioned in the list of goods and services of the marks as registered (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.):

European Union trade mark No 3 566 734:

Class 18: Handbags, pouches, purses, wallets.

Class 24: Household linens.

Class 25: Clothing for women; footwear for women.

European Union trade mark registration No 3 475 365:

Class 16: Periodicals.

Class 35: Advertising, in particular by means of advertorials, for others, by means of co-branding operations, by means of the sale and/or rental of display stands, placards and printed and/or electronic promotional media, for the promotion of miscellaneous goods and services, in particular in the fields of fashion (fashion articles and fashion accessories, styling, fashion shows), beauty and hygiene (cosmetics, soaps, perfumery preparations, hygiene preparations, beauty care).

International trade mark registration designating the EU No 546 813:

Class 3: Make-up, perfumery products.

Class 26: Lace and embroidery, ribbons and braid including bows for the hair; pins and needles including hair pins and grips.

However, there is no evidence of use of the earlier marks for the rest of the goods for which they are registered. Therefore, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition.

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 did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier European Union trade mark No 3 475 365  has a reputation in the European Union.

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 29/06/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based, had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, and for which use has been proven, namely:

Class 16: Periodicals

The opposition is directed against the following goods:

Class 3: Abrasives; Animal grooming preparations; Cleaning and fragrancing preparations; Essential oils and aromatic extracts; Tailors' and cobblers' wax; Toiletries; Abraders.

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Jewellery boxes and watch boxes; Key rings and key chains, and charms therefor; Time instruments; Jewels.

Class 18: Luggage, bags, wallets and other carriers; Saddlery, whips and apparel for animals; umbrellas and parasols; walking sticks.

Class 22: Padding and stuffing materials; Raw textile fibers and substitutes.

Class 23: Yarns and threads.

Class 24: Fabrics; Filtering materials of textile; Textile goods, and substitutes for textile goods.

Class 25: Clothing; Footwear; Headgear.

Class 26: Accessories for apparel, sewing articles and decorative textile articles; Artificial fruit, flowers and vegetables; Charms [not jewellery or for keys, rings or chains]; Hair ornaments, hair rollers, hair fastening articles, and false hair; Needles and pins for entomology.

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 01/03/2018 the opponent submitted the evidence which has already been listed in the proof of use section.

It is important to note that indications of the duration of use are particularly useful for determining the longevity of the mark. The longer the mark has been used in the market, the larger will be the number of consumers who are likely to have encountered it, and the more likely it is that such consumers will have encountered the mark more than once. For example, a market presence of 45, 50 or 100-plus years is considered a strong indication of reputation (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 36). In the present case, according to the opponent and as confirmed by Exhibit 3, the periodical ‘ELLE’ was launched in 1945, that is, more than 70 years ago.

Furthermore, in the present case, as shown in the list above, some of publications submitted by the opponent refer to the iconic status of the opponent’s mark, stating, inter alia, that the mark ‘ELLE’ was evaluated at some EUR 255 million (exhibit 6) and that the periodical ‘ELLE’ was the world’s most commercially successful fashion magazine (exhibit 15).

Special attention should also be drawn on the impressive amount of readers and copies sold every month. As an example, 6.6 million copies sold in 2014 and 10 million readers in 2016.

Furthermore, even if the Office is not bound by decisions from national offices, it should be noted that different national jurisdictions have acknowledged the reputation of the opponent’s mark.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for all of the goods on which reputation is claimed, namely, periodicals, in Class 16.

2. 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘ELLE’ in the earlier mark will be understood as ‘she/her’ by the French‑speaking part of the relevant public. Therefore, the distinctive character of this element is below average for this part of the public since it indicates that the goods in question target the female public.

As regards the contested sign, part of the public will perceive the vertical stroke at the end of the letters ‘ELLE’ as a mere line which purpose would only be decorative. Therefore, for the French-speaking part of this public, the verbal element ‘ELLE’ in the contested sign has the same meaning and distinctive character as already outlined above. Nevertheless, it cannot be excluded that a part of the public will associate this vertical stroke with the letter ‘i’. In such a case, the verbal element ‘ELLEI’ is meaningless and distinctive.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public that might also recognize the verbal element ‘ELLE’ in the contested sign.

As regards the verbal element ‘DONNA’ in the contested sign, the part of the public will recognize the Italian equivalent of the word ‘women’ because it is a very basic Italian word which will be understood. Therefore, the distinctive character of this element is below average as well since it also indicates that the goods in question target the female public. Moreover, this element will not catch as much the attention of consumers than the element ‘ELLE(I)’ that is the dominant element in the contested sign as it is the most eye-catching.

The contested sign, is also composed of a black rectangular background and of a white horizontal line of a purely decorative nature.

For a part of the public, visually, aurally and conceptually, the signs coincide in the verbal element ‘ELLE’, that constitute the earlier mark in its entirety. The signs differ in the verbal element ‘DONNA’ of the contested sign which distinctive character is however weak. Visually, the signs also differ in their stylization, that is in any event relatively basic, and in the decorative elements of the contested sign.

For the part of the public that would recognize the letter ‘i’ in the contested sign, in addition to the above, the signs differ visually and aurally in this letter. Conceptually, the signs are highly similar since the concepts conveyed by the verbal element ‘ELLE’ in the earlier mark and ‘DONNA’ in the contested sign are very close.

Therefore, the signs are visually and aurally similar at least to an average degree. Conceptually, they are, at least, highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the signs are visually and aurally similar to an average degree at least and conceptually highly similar at least.

As seen above, the earlier mark is particularly reputed in the European Union, due to the long standing and extensive use that was made of the sign in the territory in relation to periodicals. In that regard, it is worth recalling that it was the world’s most commercially successful fashion magazine (exhibit 15). Therefore, the conclusion was drawn that the earlier mark’s reputation is particularly strong.

Due to such extensive use, the earlier mark has acquired a high recognition among the relevant public and, as a result, an enhanced distinctive character.

The establishment of a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods covered by the trade marks in dispute are the same or overlap to some extent.

The contested cleaning and fragrancing preparations; toiletries; essential oils and aromatic extracts in Class 3; gemstones, pearls and precious metals, and imitations thereof; Jewellery; Jewellery boxes and watch boxes; Key rings and key chains, and charms therefor; Time instruments; Jewels in Class 14; luggage, bags, wallets and other carriers in Class 18; clothing; footwear; headgear in Class 25; artificial flowers; hair ornaments, hair rollers, hair fastening articles, and false hair in Class 26 do not belong to the same market sector as periodicals. Nevertheless, the contested goods pertain to the fashion and beauty sector, of which the opponent’s periodicals are directed and cover. Moreover, as seen above, the opponent’s periodical is the world’s most successful fashion magazine.

Part of the remaining goods for which the registration is sought, namely umbrellas and parasols; walking sticks in Class 18; padding and stuffing materials; raw textile fibers and substitutes in Class 22; yarns and threads in Class 23; Fabrics; Filtering materials of textile; Textile goods, and substitutes for textile goods in Class 24; accessories for apparel, sewing articles and decorative textile articles; artificial fruit and vegetables; charms [not jewellery or for keys, rings or chains] in Class 26 can be used as complementary fashion accessories or to decorate homes for instance. Often fashion trends influence also the trends in other related industries, such as interior design. The yarns and threads in Class 23, the padding and stuffing materials; raw textile fibers and substitutes in Class 22 and the accessories for apparel, sewing articles and decorative textile articles in Class 26, could also be part of the fashion trends. Indeed, the professionals can also use these goods to manufacture (inter alia) apparel. They therefore also follow the fashion trends and fashion magazines on apparel. Moreover, manufacturers of knitted apparel or hats, for instance, would normally be public of fashion magazines. Additionally, the trends in the clothing industry also relate to the materials of which the goods are manufactured.

The remaining contested goods are abrasives; abraders that do not include preparations for personal or cosmetic use); animal grooming preparations; tailors' and cobblers' wax (that are used for waxing thread in relation to the production/repair of clothing and footwear) in Class 3; saddlery, whips and apparel for animals in Class 18; needles and pins for entomology in Class 26.

These goods are very different from the periodicals for which the earlier trade mark is reputed. Not even taking into consideration the fact that this periodical belong to the broad sector of fashion can help to establish a link with cleaning articles and accessories and grooming preparations for animals. The goods in class 26 are also very far apart from that sector and are not produced for a secondary fashionable purpose. The goods in question have completely divergent distribution channels, are offered by different companies or suppliers and target consumers with different needs in completely different aspects of life, due to which a link would not be established in the consumer's mind.

In a case of such divergent market sectors the public is not likely to make a link between the contested sign used for those goods and the earlier reputed mark.

The mere fact that members of the specialised public are necessarily part of the general public is not conclusive as to the existence of a link. The fact that a specialised public may be familiar with the earlier mark covering goods or services aimed at the general public, is not sufficient to demonstrate that that specialised public will establish a link between the marks at issue (26/09/2018, T-62/16, PUMA (fig.) / PUMA (fig.) et al., EU:T:2018:604, §45-46).

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

4. 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.

The opponent claims the following:

- The prior trademark has established a reputation throughout the EU where its image is associated with an active, modern, trendy woman careful of her style and image.

- Should the second mark be registered in the EU, this would allow its holder to benefit from that repute when using and promoting a wide-range of fashion goods under the ‘ELLEI’ mark.

- Accordingly, the Opponent has invested considerable sums of money to diversify its mark as a coherent message around fashion and beauty which it widely promotes in the EU as a fashion brand stemming from the reputation established as a fashion magazine.

- Therefore, the applicant will benefit and obtain a free ride for its own goods labelled ‘ELLEI’.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C 252/07, Intel, EU:C:2008:655, § 36.)

Consumers attribute positive features to trade marks with reputation. In particular, in the present case, as stated in section a) of this decision, over the years, the opponent has created an image of a fashionable periodical. Some previous decisions to which the opponent referred state that ‘ELLE’ is associated with beauty, fashion, health, slimness (10/11/2010, B 1 473 000, ELLE/ Elle SUPERSLIMS The Taste of Luxury Pink 20 SUPERSLIM CIGARETTES (fig.)), or that the ELLE magazine enjoys a tremendous prestige, that it drives the French way of Life – or the French style and elegance – in Europe and the rest of the world (11/11/2009, R 1293/2008-1, ELLA VALLEY VINEYARDS (fig.) / ELLE (fig.) §26).

Furthermore, the signs are similar, as already above. The more similar the marks are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (06/07/2012, T 60/10, Royal Shakespeare, EU:T:2012:348, § 26; 27/11/2008, C 252/07, Intel, EU:C:2008:655, § 44). Consequently, in the present case, it is highly probable that consumers will make a direct association between the conflicting signs that share significant similarities and for a part of the public, the earlier mark is even entirely reproduced as such in the contested sign.

Regarding the connection between the relevant goods, as stated in section c) of this decision, they all belong to the broad sector of fashion. This allows the positive characteristics associated with the mark with a reputation to be easily attributed to the applicant’s sign, which could positively influence the choice of the consumer. Positive characteristics such as something which is fashionable could be transferred to the contested goods. Furthermore, a possible link between the signs might facilitate the introduction into the market of the contested goods bearing the contested sign, diminishing the need for investment in advertising and allowing the applicant to benefit from the opponent’s efforts and reputation in the market.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods:

Class 3: Cleaning and fragrancing preparations; Essential oils and aromatic extracts; Toiletries.

Class 14:  Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Jewellery boxes and watch boxes; Key rings and key chains, and charms therefor; Time instruments; Jewels.

Class 18: Luggage, bags, wallets and other carriers; Umbrellas and parasols; walking sticks.

Class 22: Padding and stuffing materials; raw textile fibers and substitutes

Class 23: Yarns and threads.

Class 24: Fabrics; Filtering materials of textile; Textile goods, and substitutes for textile goods.

Class 25: Clothing; Footwear; Headgear.

Class 26: Accessories for apparel, sewing articles and decorative textile articles; Artificial fruit, flowers and vegetables; Charms [not jewellery or for keys, rings or chains]; Hair ornaments, hair rollers, hair fastening articles, and false hair.

The opposition is not successful insofar as the remaining goods are concerned, namely:

Class 3: Abrasives; abraders; animal grooming preparations; tailors' and cobblers' wax.

Class 18: Saddlery, whips and apparel for animals.

Class 26: Needles and pins for entomology.

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 and services

The goods and services on which the opposition is based and for which use has been proven, are the following:

European Union trade mark No 3 566 734:

Class 18: Handbags, pouches, purses, wallets.

Class 24: Household linens.

Class 25: Clothing for women; footwear for women.

European Union trade mark No 3 475 365:

Class 35: Advertising, in particular by means of advertorials, for others, by means of co-branding operations, by means of the sale and/or rental of display stands, placards and printed and/or electronic promotional media, for the promotion of miscellaneous goods and services, in particular in the fields of fashion (fashion articles and fashion accessories, styling, fashion shows), beauty and hygiene (cosmetics, soaps, perfumery preparations, hygiene preparations, beauty care).

International Registration No 546 813 designating the European Union:

Class 3: Make-up, perfumery products.

Class 26: Lace and embroidery, ribbons and braid including bows for the hair; pins and needles including hair pins and grips.

European Union trade mark No 10 910 958:

Class 31: Natural plants and flowers; dried plants and flowers for decoration.

French trade mark No 4 158 677

Class 14: Precious metals and their alloys other than for dental purposes; jewellery; precious stones; horlogical and chronometric instruments; watches; bracelets (jewellery); watch cases and watch chains; necklaces (jewellery); earrings; brooches (jewellery); trinkets; key rings (trinkets or fobs); jewellery cases (caskets); boxes urns and/or cases of precious metal.

The remaining contested goods are the following:

Class 3: Abrasives; abraders; animal grooming preparations; tailors' and cobblers' wax.

Class 18: Saddlery, whips and apparel for animals.

Class 26: Needles and pins for entomology.

The terms ‘in particular’, ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

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 26

The contested needles and pins for entomology are included in the broad category of the opponent’s pins and needles including hair pins and grips of International Registration No 546 813 designating the European Union. Therefore, they are identical.

As regards the rest of these contested goods in Classes 3 and 18, the Opposition Division notes that they do not target the same consumers. The contested goods are very specific and have very different natures and purposes. They usually have different distribution channels and are produced by very different companies because their manufacturing processes require different technical know-how etc.

Therefore, the goods under comparison do not have points of contact that would justify a level of similarity between any of the goods and services of the earlier marks.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods of earlier European Union trade marks No 3 566 734, No 10 910 958, No 3 475 365, No 10 910 958 and of French trade mark No 4 158 677 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as far as these earlier rights are concerned.

The assessment will continue in relation to International Registration No 546 813 designating the European Union.

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 whose degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Despite the slightly different typeface as regards the earlier mark, the same findings as those already reached under Articles 8(5) are applicable in the present case.

3. Distinctiveness of the earlier mark

The distinctiveness of the earlier marks 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for all the goods in question.

3. Global assessment, other arguments and conclusion

According to settled case-law, 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, EU:C:1998:442, §16).

Furthermore, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.

In the present case, the goods and services are partly identical and partly dissimilar. The signs are visually and aurally similar to an average degree at least and conceptually highly similar at least. This is because the earlier mark is entirely reproduced in the distinctive and dominant element ‘ELLE(I)’.

A coincidence in an element with a reduced degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact. In the present case, for the part of the public that will also see the verbal element ‘ELLE’ in the contested sign, the other components are considered to have the same degree of distinctiveness or to have a very limited impact for their secondary role in the sign.

As seen above, part of the French-speaking public will not associate distinctive and dominant element ‘ELLEI’ of the contested sign with any meaning. Nonetheless, it remains that, for this part of the public, the signs are visually and aurally similar to an average degree at least and that the degree of attention of the relevant public is deemed average. In this respect, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s International Registration No 546 813 designating the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Victoria DAFAUCE MENÉNDEZ

Sandra IBAÑEZ

Aldo BLASI

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.