OPPOSITION No B 3 050 540

Duca del Cosma B.V., Raadhuislaan 4, 3633 AR Vreeland, The Netherlands (opponent), represented by HGF Limited, 8th Floor, 140 London Wall, London EC2Y 5DN, United Kingdom (professional representative)

a g a i n s t

Phillip LaDuca, 319 w 47th Street, 10036 New York, United States of America (applicant), represented by Freeman Harris Solicitors, 6 Sutton Street, London E1 0BB, United Kingdom (professional representative).

On 17/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 540 is partially upheld, namely for the following contested goods:

Class 25: Shoes, namely dance shoes, training shoes, leather shoes, dress shoes, ballet shoes, flat shoes, tap shoes, platform shoes, high-heeled shoes, wedding shoes, boots, namely ankle boots; ladies fashion footwear; ladies footwear; footwear for men; clothing, namely t-shirts and leggings; clothing for men and women.

2. European Union trade mark application No 17 504 507 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 17 504 507 for the word mark ‘LADUCA, namely against all the goods in Class 25. The opposition is based on, inter alia, international trade mark registration No 1 093 502 designating the European Union for the word mark ‘Duca’s’. In relation to this earlier mark the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. Furthermore, the opponent invoked Article 8(4) with regard to its non-registered trade marks ‘DUCA DEL COSMA’ and ‘DUCA'S’ used in the United Kingdom, Ireland and the European Union.

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 international trade mark registration No 1 093 502 designating the European Union for the word mark ‘Duca’s’.

a) The goods

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

Class 25: Clothing, sportswear, in particular golf wear; footwear, boots for sport, sports shoes, in particular golf shoes; gloves, headgear for wear.

The contested goods are the following:

Class 25: Shoes, namely dance shoes, training shoes, leather shoes, dress shoes, ballet shoes, flat shoes, tap shoes, platform shoes, high-heeled shoes, wedding shoes, boots, namely ankle boots; fittings of metal for boots and shoes; ladies fashion footwear; ladies footwear; footwear for men; clothing, namely t-shirts and leggings; clothing for men and women.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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). However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 25

The contested shoes, namely dance shoes, training shoes, leather shoes, dress shoes, ballet shoes, flat shoes, tap shoes, platform shoes, high-heeled shoes, wedding shoes, boots, namely ankle boots; ladies fashion footwear; ladies footwear; footwear for men are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested clothing, namely t-shirts and leggings; clothing for men and women are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested fittings of metal for boots and shoes are all parts of footwear that are used during the manufacturing process of these goods. Therefore, these contested goods and the opponent's ones (being finished products) have different natures, manufacturers, distribution channels and customers, and they are neither complementary nor in competition. Consequently, these contested goods are dissimilar 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 average.

c) The signs

Duca's	LADUCA
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 elements ‘Duca’s’ and ‘LADUCA’ are meaningless for, at least, the Spanish-speaking part of the public in the relevant territory, for whom the words are of average distinctive character. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

Both marks are word marks and, therefore, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the signs are represented in upper- or lower-case characters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), which is not the case at hand.

The ending ‘`s’ in the earlier mark (i.e. an apostrophe followed by a consonant) is not used in Spanish. Therefore, Spanish consumers will just perceive it as a fanciful spelling of the word ‘Ducas’. Little attention will be paid to the apostrophe as such, since it does not have any conceptual or phonetic impact on the perception of the mark, and is of very little visual impact, as explained below.

Visually, the signs coincide in a string of letters ‘Duca’/’DUCA’. However, they differ in an apostrophe at the end of the earlier mark and its last letter ‘s’. Furthermore, they differ in the first two letters of the contested sign, namely ‘LA’.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Duca’/’DUCA’, present identically in both signs. The pronunciation differs in the sound of the last letter ‛s’ of the earlier mark and the first two letters of the contested sign, that is, ‘LA’. The apostrophe used in the earlier mark has no influence on the pronunciation of the earlier mark.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account should also be 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 have been found partly identical and partly dissimilar to the opponent’s goods. The relevant public is the public at large with an average degree of attention.

The signs are visually similar to a below average degree and aurally similar to an average degree. The conceptual comparison remains neutral. The distinctiveness of the earlier mark is normal.

As the conflicting signs consist of the same string of letters ‘Duca’/’DUCA’ which will be perceptible by the relevant public, and which constitute a significant part of both marks.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 093 502 designating the European Union for the word mark ‘Duca’s’. 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.

Since the opposition is partially 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 extensive use/reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

- German trade mark registration No 302 011 003 900 for the word mark ‘Duca’s’,

- International trade mark registration No 856 912 for the word mark ‘DUCA DEL COSMA’ designating the European Union.

Since these marks cover the same scope of the goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 22/05/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 27/09/2018.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR], when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 22/05/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 27/09/2018.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Helen Louise MOSBACK

Michal KRUK

María del Carmen SUCH SÁNCHEZ

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.