OPPOSITION No B 3 001 479

Daniel Franklin Esquitino Payá, Marie-Curie, 21 - Elche Parque Industrial, 03203 Elche, Spain (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1‑1°, 28010 Madrid, Spain (professional representative)

a g a i n s t

Massimiliano Morandini, Via Savona, 70, 20144 Milano, Italy, Andrea Tutolo, Via Torelli, 51, 59100 Prato, Italy and Luca Cappelloni, Via Dante Ricci, 7, 05021 Acquasparta, Italy (applicants).

On 30/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 001 479 is upheld for all the contested goods.

2. European Union trade mark application No 17 290 123 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 290 123 for the figurative mark , namely against all the goods in Class 25. The opposition is based, inter alia, on European Union trade mark registration No 13 625 389 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s aforementioned European Union trade mark registration.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing.

Clothing is identically contained in both lists of 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 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 contested sign is a figurative mark consisting of the verbal element ‘FRANKINI’ in black uppercase standard letters. However, there are no further figurative elements or graphical stylization. Since the figurative mark is depicted in an up-to-date font and without any other graphic element, the principles developed in relation to word marks should therefore be applied (09/09/2010, C-265/09 P, α, EU:C:2010:508, §25).

The verbal element ‘FRANKINI’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The earlier mark is also a figurative mark composed of the verbal elements ‘D.Franklin’, written in standard black letters, in title case and placed above a figurative element. The latter will be perceived as a rectangle composed of three different sized black rectangles divided by white lines.

The verbal elements of the earlier mark, ‘D.Franklin’, will be perceived as a reference to a person’s name, respectively as first letter of a given name followed by a surname. These verbal elements do not indicate or allude to any of the characteristics of the relevant goods and are, therefore, normally distinctive. The figurative element as described above is rather of a decorative nature.

In any case, 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).

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in seven letters ‘FRANK*IN/*’. They differ in the first letter D followed by the dot and the sixth letter ‘L’ of the verbal element ‘Franklin’ in the earlier mark and the last letter ‘I’ of the contested sign. Furthermore, the signs differ in the figurative element of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are visually similar to an average 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 ‘FRANK*IN*’, present identically in both signs. The pronunciation differs in the remaining letters of the signs, namely the letter D, the letter ‘L’ of the earlier mark and the letter ‘I’ of the contested sign. The relevant public will not pronounce the dot, placed after the letter ‘D’ of the earlier mark. Despite these differences, the signs have the same number of syllables [d-fran-klin], [fran-ki-ni]. Hence, coinciding in seven letters and in the number of the syllables, the two signs have similar rhythm and intonation. The figurative element of the earlier mark has no impact on its pronunciation.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs 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, despite the presence of an element of a rather decorative nature in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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).

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).

In the present case, the contested goods are identical and are directed at the public at large whose degree of attention is deemed average.

The similarities between the signs result from the coincidence in the sequence of the letters ‘FRANK*IN/*’. The differing verbal and figurative elements and stylisation of the earlier mark are not sufficient to counteract the visual and aural similarity. Therefore, the relevant public is likely to assume that the relevant goods bearing either one or another sign come from the same undertaking or from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 625 389. It follows that the contested trade mark must be rejected for all the contested goods.

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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA- VALCHANOVA

Renata COTTRELL

Tu Nhi VAN

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.