OPPOSITION No B 3 065 024

Lulu's Fashion Lounge, LLC, 195 Humboldt Ave., 95928 Chico, United States of America (opponent), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 Munich, Germany (professional representative)

a g a i n s t

Lulu Centre LLC, Street No. 16 Karama, Dubai, United Arab Emirates (holder), represented by Haseltine Lake Kempner LLP, Fountain House, 4 South Parade, LS1 5QX Leeds, United Kingdom (professional representative).

On 19/11/2019, the Opposition Division takes the following

DECISION:

1. The decision on opposition No B 3 065 024 issued on 17/09/2019 is hereby revoked.

2. Opposition No B 3 065 024 is partially upheld, namely for the following contested services:

Class 35: Administrative processing of purchase orders; Business administration; Business information; Business inquiries; Business management; Commercial administration of the licensing of the goods and services of others; Commercial information and advice for consumers [consumer advice shop]; Office functions; The bringing together, for the benefit of others, of a variety of goods, namely vacuum cleaners, clothes dryers, dishwashers, fan heaters, fan coolers, refrigerators, microwave ovens, ovens, televisions, toaster and toaster ovens, vacuum cleaners, washing machines, jewellery, precious stones, watches, stationary items, belts, wallets, portfolio cases, mobile phone cases, handbags, luggage, furniture, kitchen utensils and accessories, clothing, footwear, head gear, embroidery articles, games and sports apparatus, grocery and food items(excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

2. European Union trade mark application No 17 867 014 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 867 014, ‘LULU’, (word mark). The opposition is based on international trade mark registration No 1 230 611, LULU’S, (word mark) designating the European Union.The opponent invoked Article 8(1)(b)EUTMR.

REVOCATION OF DECISION OF 17/09/2019

In accordance with Article 103 EUTMR, where the Office has taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the decision is revoked. Revocation shall be determined within one year from the date on which the decision was taken, after consultation with the parties to the proceedings.

On 09/10/2019 the Office informed the parties in the present proceedings that it had the intention to revoke the decision of 17/09/2019 taken in the opposition proceedings number No B 3 065 024.

The reason was that the proceedings that led to this decision contained an obvious error attributable to the Office, namely that the dictum did not mention some services in Class 35 for which, according to the reasoning of the decision, the opposition had also been upheld.

In accordance with Article103 EUTM, the Office gave two months to the parties to submit any observations.

The parties did not submit any observations.

Therefore, the decision taken on 17/09/2019 in the opposition No B 3 065 024 is hereby revoked and is replaced by the present decision

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.

1. The goods and services

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

Class 25: Clothing, namely dresses, tops, sweaters, vests, jackets, skirts, pants, jeans, shorts, leggings, tights, socks, overalls, swimwear, rompers, jumpsuits, lingerie, bodysuits; headwear, namely, hats; footwear, namely, shoes, boots, flip flops, sandals.

Class 35: Computerized on-line ordering featuring general merchandise and general consumer goods; computerized on-line ordering services in the field of clothing, shoes, jewellery and accessories; computerized on-line retail store services in the field of clothing, shoes, jewellery and accessories.

The contested services are the following:

Class 35: Administrative processing of purchase orders; Advertising; Business administration; Business information; Business inquiries; Business management; Commercial administration of the licensing of the goods and services of others; Commercial information and advice for consumers [consumer advice shop]; Office functions; Presentation of goods on communication media, for retail purposes; Publicity; The bringing together, for the benefit of others, of a variety of goods, namely vacuum cleaners, clothes dryers, dishwashers, fan heaters, fan coolers, refrigerators, microwave ovens, ovens, televisions, toaster and toaster ovens, vacuum cleaners, washing machines, jewellery, precious stones, watches, stationary items, belts, wallets, portfolio cases, mobile phone cases, handbags, luggage, furniture, kitchen utensils and accessories, clothing, footwear, head gear, embroidery articles, games and sports apparatus, grocery and food items(excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

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

The term ‘for example’ used in the applicant’s list of services indicates that the specific 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).

However, the term ‘namely’ used in the applicant’s list of services and in the holder’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 and services 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.

The contested administrative processing of purchase orders overlaps with, the opponent’s computerized on-line ordering featuring general merchandise and general consumer goods. Therefore, they are identical.

The contested business administration; business information; business inquiries; business management; commercial administration of the licensing of the goods and services of others; commercial information and advice for consumers [consumer advice shop]; office functions are at least similar to the opponent’s computerized on-line ordering services in the field of clothing, shoes, jewellery and accessories. All the contested services are services intended to help companies with the performance of business operations, they coincide with the holder’s services in their purpose and relevant public. Furthermore they can be provided by the same companies.

The contested the bringing together, for the benefit of others, of a variety of goods, namely vacuum cleaners, clothes dryers, dishwashers, fan heaters, fan coolers, refrigerators, microwave ovens, ovens, televisions, toaster and toaster ovens, vacuum cleaners, washing machines, jewellery, precious stones, watches, stationary items, belts, wallets, portfolio cases, mobile phone cases, handbags, luggage, furniture, kitchen utensils and accessories, clothing, footwear, head gear, embroidery articles, games and sports apparatus, grocery and food items (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes is at least similar to the opponent’s computerized on-line retail store services in the field of clothing, shoes, jewellery and accessories. Retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Furthermore, depending on whether the goods in question are commonly retailed in the same outlets, they may coincide in relevant public and distribution channels, in which case they must be considered highly similar. Therefore the contested services are at least similar to the opponent’s services.

The contested advertising; presentation of goods on communication media, for retail purposes; publicity are dissimilar to all the opponent’s goods and services. Advertising services generally target the professional public and are provided by business management consultants, advertising executives, market researchers and data analysts, The opponent’s services are limited to specific activities mainly in the field of the retail of specific goods, which are clearly distinct, in nature and purpose, from the contested services. They have different distribution channels and target a different public. They are not complementary, nor are they in competition. They are also different in nature and purpose from the opponent’s goods. The fact that some goods or services may appear in advertisements is insufficient for finding similarity.

2. 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 services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high.

3. The signs

LULU’S	LULU
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).

Both signs are words mark, which coincide in all their letters except for the earlier mark’s additional last ’S’ and apostrophe. They will be associated with a female name, the pet form of Louise and also in informal English to ‘an outstanding example of a particular type of person or thing’ (information extracted from English Dictionary Lexico on line on 04/09/2019 at https://www.lexico.com/en/definition/lulu) or, owned by this person ( for the part of the public which grasps the meaning of the apostrophe). The last ‘S’ of the earlier mark preceded with an apostrophe will be associated with the grammatical English possession form by a part of the public (e.g. English-speaking public) and by another part it may be seen as the word’s plural. As the words ‘LULU/’S’ have no meaning in relation with the relevant services, they have an average degree of distinctiveness.

Visually, the signs coincide in the word ‘LULU’ which is the contested sign’s sole word. However, they differ in the additional ‘S’ and apostrophe of the earlier mark.

Therefore, the signs are visually 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 ‘LULU’, present in both signs. The pronunciation differs in the sound of the additional last letter ‛S’ of the earlier sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public which associate both signs with the female name ‘LULU’ or to outstanding example of a particular type of person or thing, the signs are conceptually identical. For the part of the public which additionally associates the earlier sign with its possessive form, the signs are conceptually 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.

4. 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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The services are partly identical, partly similar and partly dissimilar and the degree of the public’s attention -the public at large and business customers- may vary from average to high.

The signs are word marks, visually and aurally highly similar and conceptually similar to a high degree or identical for a part of the relevant public. The signs consist of the same word except for an additional last letter and apostrophe of the earlier mark. It is considered that the small differences are not enough to counteract the high visual and aural similarity and conceptual high similarity or identity for a part of the public, between the signs.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 230 61 designating the European Union.

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

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

The Opposition Division

Andrea VALISA

Aurelia PEREZ BARBER

Justyna GBYL

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.