OPPOSITION No B 3 049 615

Mario Valentino S.p.A., Via Fontanelle 85, 80136 Napoli, Italy (opponent), represented by Società Italiana Brevetti S.p.A., Piazza di Pietra 39, 00186 Roma, Italy (professional representative)

a g a i n s t

Teaser Marketing Online S.L.U, Ronda Vall d'Uixó, 03206 Elche, Spain (applicant), represented by Almudena Abellán Pérez, Calle Calderón de La Barca Nº 12-entresuelo A, 30001 Murcia, Spain (professional representative).

On 26/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 615 is partially upheld, namely for the following contested goods and services:

Class 25: Headgear; Footwear; Clothing.

Class 35: Wholesale services in relation to clothing; Retail services in relation to clothing; Wholesale services in relation to footwear; Retail services in relation to footwear.

2. European Union trade mark application No 17 507 005 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 507 005 for the figurative mark , namely against all the goods in Class 25 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 96 669 for the word mark ‘VALENTINO’. 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.

a) The goods and services

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; luggage; bags, handbags, purses, cases, vanity cases, pocket-books, wallets, briefcases, attaché cases, key-holders; walking sticks; whips, hamess and saddlery.

Class 25: Footwear, belts, gloves.

The contested goods and services are the following:

Class 25: Headgear; Footwear; Clothing.

Class 35: Wholesale services in relation to clothing; Retail services in relation to clothing; Wholesale services in relation to footwear; Retail services in relation to footwear; Organization of fashion shows for promotional purposes.

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

Footwear is identically included in both lists of goods.

The contested clothing includes, as a broader category, the opponent’s gloves. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear is similar to the opponent’s footwear as these goods have the same purpose namely to give protection against the elements and they target the same public. They also have the same distribution channels and their commercial origin usually overlaps.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply in relation to wholesale services.

Therefore, the contested wholesale services in relation to clothing; retail services in relation to clothing; wholesale services in relation to footwear; retail services in relation to footwear are similar to a low degree to the opponent’s footwear, gloves in Class 25.

The contested organization of fashion shows for promotional purposes has no relevant points of contact with the opponent’s goods in Classes 18 and 25. Even if the opponent’s goods can be fashion goods it is clear that the conflicting goods and services are provided by different undertakings. They target completely different publics through different distribution channels. Their purposes, methods of use and natures are also distinct. They are neither complementary nor in competition. Consequently, they are dissimilar.

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 and services found to be identical or similar to varying degrees are directed partly at the public at large and partly at business customers (with regard to wholesale services).

The applicant argues that they belong to a much specialised niche of clothing and therefore the level of public’s attention will be high. The Opposition Division notes that the comparison of the goods and services and determination of the level of attention must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison. Therefore, this argument of the applicant has to be set aside.

The degree of attention is considered to be average.

c) The signs

VALENTINO
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 words ‘VALENTINO’ and ‘VALENTINA’ are Italian names one being male and the other female or a surname in case of ‘VALENTINO’. This part of the public will therefore perceive them as being conceptually further apart. Consequently, for economy of the proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on the French- and Polish-speaking part of the public, for which these names either do not exist or are rare.

The word ‘VALENTINO’ of the earlier mark will be associated with a foreign male name by the relevant public. The element ‘VALENTINA’ of the contested sign will be perceived as a female foreign name. As these elements have no relation with the goods and services in question, they are considered distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

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 symbol of a heart is commonly used in trade and in marketing in order to convey positive emotions. It has therefore very weak distinctive character, if any. Although the figurative element of the contested sign is composed of two hearts in a quite fanciful arrangement, still it will be perceived merely as embellishment.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the initial letters ‘VALENTIN’ of their distinctive elements. However, they differ in their final letters ‘O’ of the earlier sign and ‘A’ of the contested one. The signs also differ in the figurative element of the contested sign, which has nevertheless limited impact on its perception for the reasons mentioned above.

Therefore, the signs are highly similar.

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 ‛VALENTIN’, present identically in both signs. The pronunciation differs in the sound of the last letters ‛O’/’A’.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, the signs are conceptually similar to an average degree. Although they refer to a foreign male and female name, these names both derive form the same root, namely the Roman name Valentinus.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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).

In the present case the goods and services are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large and professionals whose level of attention is average.

The signs are visually and aurally highly similar, as they coincide in eight out of nine letters in the same position. The only difference lies in one letter at the end of each mark that may easily go unnoticed by consumers. Conceptually the signs are similar to an average degree as they refer to the same first name, albeit in male and female form. As these names are foreign names for the public under analysis, this difference is not so striking and can go unnoticed by the consumer especially taking into account 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 view of the above, it is concluded that the abovementioned differences between the marks are not capable of counteracting the significant similarities between them both for the contested goods and services found to be identical and for those found to be similar, even to a low degree.

The applicant argues that the relevant public will not confuse the signs due to the reputation that the earlier mark enjoys. However, as the opponent has not proven that the earlier mark is reputed, for the purpose of the proceedings it is considered that the earlier sign enjoys a normal degree of distinctiveness.

In its observations, the applicant argues that it is the proprietor of a number of registrations for the word ‘VALENTINA’ in Spain and in the EU, which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of a likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

In its observations the applicant refers to its other registrations that contain the word ‘VALENTINA’. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and it follows that it is from the filing date that the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than to the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French- and Polish-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested services are dissimilar. As a 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 services cannot succeed.

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

The Opposition Division

Anna ZIOŁKOWSKA

Katarzyna ZANIECKA

Martin INGESSON

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.