OPPOSITION No B 3 058 551

Stefano Ricci S.P.A., Via Faentina, 171, 50010 Fiesole (Florence), Italy (opponent), represented by Ufficio Tecnico Ing. A. Mannucci, Via della Scala, 4, 50123 Florence, Italy (professional representative)

a g a i n s t

Shenzhen Liming Watch Co. Ltd., 2/F,C Building, Tangxi Second Industrial Zone,Gushu, Xixiang Baoan District, 518126 Shenzhen, People’s Republic of China (applicant), represented by Isidro Jose Garcia Egea, Calle Obispo Frutos 1B 2°A, 30003 Murcia, Spain (professional representative).

On 22/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 551 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 880 102, for the figurative mark . The opposition is based on the following earlier rights:

1. Italian trade mark registration No 1 560 927, for the figurative mark ;

2. Italian trade mark registration No 1 560 928, for the figurative mark ;

3. Italian trade mark registration No 2 016 000 017 080, for the figurative mark ;

4. Italian trade mark registration No 2 017 000 029 974, for the figurative mark ;

5. Domain name ‘www.sr-luxury.com’ and others, used in the course of the trade in Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

6. Non-registered trade mark ‘SR’ used in the course of the trade in Italy.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR with regards to earlier right 1 while it invoked only Article 8(1)(b) EUTMR with regards to earlier rights 2-4.

Furthermore, it invoked Article 8(4) EUTMR with regards to earlier rights 5 and 6.

Preliminary remarks on Article 8(4) EUTM, invoked as a ground for the opposition

Regarding the domain names

As far as the earlier rights 5 are concerned, it is noted that the opponent submits a very extensive list of domain names, which are not listed in the present decision, as the finding that concerns the domain name www.sr-luxury.com regarding the applicable law and the opponent’s right vis-à-vis the contested trade mark (further elaborated in section ‘Non‑Registered Mark or Another Sign Used in the Course of Trade — Article 8(4) EUTMR’) are equally applicable to all domain names invoked. Therefore, the general reference to them (without explicitly pointing to each one of them) is not in any way prejudicial to the rights of the opponent.

Regarding the territories concerned

The Opposition Division takes note that the opponent also indicated the ‘EUIPO’ as a territory, as far as earlier rights 5 are concerned. However, as the Office is not a territory per se, neither does it administer any rights related to domain names, such an indication does not refer to a valid territory that could be indicated under Article 8(4) EUTMR. Even if the opponent meant to indicate the ‘EU’, there is no European Union regulation that governs the domain names as rights in the meaning of Article 8(4) EUTMR. Therefore, the Opposition Division will proceed with the examination on this ground (in regard to earlier rights 5) as far as the territories of the Member States, listed in the ‘Reasons’ section, are concerned.

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 Italian trade mark registration No 1 560 927, for the figurative mark .

a) The goods

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

Class 9: Eyeglasses; eyeglasses frames; eyeglasses cases.

Class 14: Horological and chronometrical instruments.

Class 18: Keys cases (leather goods); walking sticks; umbrella sticks; travelling trunks; bags; travelling bags (made of leather); reins; card cases (pocket wallets); briefcases (leather goods); coverings of skins (furs); folders; hides (animal skins); pocket wallets; purses; suitcases; attaché cases; rucksacks; backpacks; saddlery; horse halters; horse collars; horse blankets; riding saddles; horseshoes; halters.

Class 25: Clothing; suits; bathrobes; bathing suits; bathing trunks; beach clothes; berets; body linen; underwear; blouses; suspenders; shoes; sports shoes; socks; stockings; dressing gowns; shirts; hats; overcoats; belts (clothing); layettes; ties; papillon (ties); pocket-handkerchiefs; silk handkerchiefs; sashes for wear; sashes for smoking suits; jackets; vests; great coats; gloves (clothing); raincoats; leather garments; singlets; sweaters; polo-neck sweaters; jumpers; pullovers; pelerines; trousers; slippers; pelisses; furs (clothing); pyjamas; sandals; shoes; scarves; beach dresses; half-boots; boots; t-shirts.

The contested goods are the following:

Class 14: Watch bands; chronometric instruments; watch cases [parts of watches]; presentation boxes for watches; stopwatches; chronometers; clocks and watches, electric; watches; atomic clocks; wristwatches.

The contested chronometric instruments; stopwatches; chronometers; clocks and watches, electric; watches; atomic clocks; wristwatches are identical to the opponent’s horological and chronometrical instruments either because they are identically included in both lists of goods or because they are included in the broad category of the opponent’s horological and chronometrical instruments.

The contested watch bands; watch cases [parts of watches]; presentation boxes for watches are similar to the opponent’s horological and chronometrical instruments because all of these goods have the same producer and distribution channels and can target the same public. Furthermore, they can be complementary (i.e. in the case of watch bands and watch cases [parts of watches]).

Furthermore, and in view of the opponent’s claim for reputation/enhanced distinctiveness of the earlier mark, the Opposition Division finds it appropriate to note that the contested goods are dissimilar to the opponent’s goods in Class 25 for which the claim of reputation is expressly limited in the notice of opposition. Indeed, the contested goods are time instruments used to measure and check the time and parts and accessories thereof while the opponent’s goods for which reputation has been claimed are clothing, footwear and accessories thereof used to cover parts of the human body. Therefore, they differ in purpose and method of use. They are not complementary or in competition. They are produced by different undertakings and distributed through different channels.

Similar consideration applies in relation to the opponent’s goods in Class 9 (eyeglasses) and 18 (leather goods). The contested goods in Class 14 are dissimilar to these opponent’s goods. They differ in purpose and method of use. They are not complementary or in competition. They are produced by different undertakings and distributed through different channels.

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 or similar are directed at the public at large and at a specialised public with professional knowledge and experience. However, even with respect to the public at large, the degree of attention may vary from average to high, depending on the specialised nature of the goods and/or their price or sophistication. For instance, as regards to wristwatches, the Boards of Appeal have held that consumers generally put a certain amount of thought into the selection of these goods. In many cases such goods will be luxury items or will be intended as gifts (09/12/2010, R-900/2010 1, Leo Marco (fig.) / LEO, § 22).

c) The signs

(earlier right 1)
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 earlier mark is figurative mark composed of the stylised depiction of two letters ‘S’ and ‘R’ intersecting each other.

The contested sign is a figurative mark composed of the verbal element ‘SENORS’ depicted in a stylised uppercase typeface accompanied by the stylised depiction of two letters ‘S’ and ‘R’ intersecting each other and almost completely included inside a an incomplete circle. This last element is likely to be perceived, at least by part of the public, as an acronym merely including two of the letters composing the element below ‘SENORS’.

The sequence of letters ‘SR’ and the verbal element ‘SENORS’ do not carry any particular meaning for the public in the relevant territory. Therefore, they have an average degree of inherent distinctiveness. Both the earlier mark and the contested sign have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘SR’. However, these coinciding letters, albeit intersecting in both marks, are depicted in different typefaces and are almost completely included within an incomplete circle in the contested sign. In particular, in the earlier mark the coinciding letters are depicted in bold rather standard typeface where the size of the components of the letters is proportionate. On the contrary, in the contested sign the bottom curving stroke of the ‘S’ and the upper loop of the ‘R’, which are the only components intersecting (while in the earlier mark all the components intersect), are much bigger than their other respective components.

Furthermore, the signs differ in the verbal element ‘SENORS’ which, due to its size, although it is not dominant in comparison with the element ‘SR’, occupies the largest part of the contested sign. Such differing element makes this sign much longer and contributes to confer the sign a completely different structure from that of the earlier mark.

Therefore, the signs are visually similar at most to a low degree.

Aurally, for the part of the public that will perceive the element ‘SR’ of the contested sign as an acronym merely including two of the letters from the word below ‘SENORS’, the signs are not similar because the element ‘SR’ will not be pronounced in the contested sign.

For the remaining part of the public the pronunciation of the signs coincide in the sound of two letters ‘SR’, while it differs in the sound of six letters ‘SENORS’. Therefore, for this part of the public, the signs are aurally similar to a low 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 trade mark enjoys reputation among the relevant public in Italy only in connection with part of the goods for which it is registered, namely the goods in Class 25 which have been found to be dissimilar to the contested goods.

For the sake of completeness, the Opposition Division notes that the opponent also states that the earlier mark has been applied since many years also on other goods covered by the earlier mark. In this respect, it explicitly mentions leather goods (e.g. wallets, key-cases) and sunglasses. However, even assuming that such statement can be interpreted as a claim of enhanced distinctiveness of the earlier mark, the category of goods explicitly mentioned by the opponent have been found to be dissimilar to the contested goods.

Therefore, since the opponent did not claim reputation or enhanced distinctiveness for goods for which an identity or similarity to the contested goods could be established, the reputation or enhanced distinctiveness of the earlier trade mark does not affect the examination of likelihood of confusion.

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

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.

The goods are found to be partly identical and partly similar and they target both the public at large and the professional public. The degree of attention of the relevant public varies from average to high. The earlier mark enjoys an average degree of inherent distinctiveness.

The signs are visually similar at most to a low degree and aurally similar to a low degree for part of the public while they are aurally not similar for the remaining part. Conceptually, they are neutral and therefore the conceptual aspect does not influence the comparison of the signs.

A likelihood of confusion can be safely excluded when two conflicting signs, albeit containing or consisting of the same combination of letters, are stylised sufficiently differently so that their different overall graphical depictions overshadow the coinciding verbal element.

In the present case, although the signs contain the same two letters (SR), which are intersecting in both signs, their stylisation present noticeable differences as explained above, and also striking is the addition of the word ‘SENORS’ in the contested sign which is not included in the earlier mark. Consequently, the similarities between the signs are limited to the letters ‘SR’. The public will notice the differences and keep them in mind, especially when considering that the earlier mark is so short.

Even though account must 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, the Opposition Division is still of the opinion that, in the present case, the signs are not sufficiently similar to lead to a likelihood of confusion, or a likelihood of association, even for the goods for which the degree of attention will be average. Therefore, the opposition insofar as it is based on earlier right 1 must be rejected.

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

(i) Italian trade mark registration No 1 560 928, for the figurative mark ;

(ii) Italian trade mark registration No 2 016 000 017 088, for the figurative mark ;

(iii) Italian trade mark registration No 2 017 000 029 974, for the figurative mark .

These other marks invoked by the opponent are clearly less similar to the contested sign, as they contain, in addition to the earlier mark that has already been compared, additional figurative or verbal elements that make them even less similar to the contested sign.

Therefore, the outcome cannot be different on the basis of these earlier rights, even assuming the contested goods to be identical to those covered by these earlier marks.

Therefore, no likelihood of confusion exists with respect to the contested goods and any of the goods of the earlier marks on which the opposition is based.

The examination of the opposition will continue on the basis of the other grounds invoked by the opponent, namely Article 8(4) and Article 8(5) EUTMR.

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.

a) Reputation of the earlier trade mark

According to the opponent, Italian trade mark registration 1 560 927, (earlier right 1) has a reputation in the European Union in connection with some of the goods for which it is registered namely the goods in Class 25.

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 25/03/2018. Therefore, the opponent was required to prove that his earlier mark had acquired a reputation in Italy prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: Clothing; suits; bathrobes; bathing suits; bathing trunks; beach clothes; berets; body linen; underwear; blouses; suspenders; shoes; sports shoes; socks; stockings; dressing gowns; shirts; hats; overcoats; belts (clothing); layettes; ties; papillon (ties); pocket-handkerchiefs; silk handkerchiefs; sashes for wear; sashes for smoking suits; jackets; vests; great coats; gloves (clothing); raincoats; leather garments; singlets; sweaters; polo-neck sweaters; jumpers; pullovers; pelerines; trousers; slippers; pelisses; furs (clothing); pyjamas; sandals; shoes; scarves; beach dresses; half-boots; boots; t-shirts.

In order to determine the marks’ 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.

The opponent submitted the following evidence:

 Advertisements: around 400 examples of advertisement published in Italian and foreign magazines and newspapers (in several languages including English, Italian, Japanese, Turkish and Russian), dated between 1982 to 2018, displaying or mentioning the opponent’s brand ‘STEFANO RICCI’ and often including illustrations of the opponent’s products (clothing, bags, perfumes, pens, furniture and home textiles) bearing the brand ‘STEFANO RICCI’. Only a few of these examples of advertisement show the use of the earlier mark in the relevant territory for the relevant goods in Class 25, because they are (at least in part) in Italian and thus clearly address the Italian public. In particular, (i) extracts dated in 2010 from ‘Equestrio Italia’, from ‘Seasonings Italia’ and from ‘Forte Estate’ (item also submitted among the press releases) include an advertisement showing the earlier mark depicted on a pocket handkerchief as in the picture below;

(ii) exctracts from ‘La Rotonda’ (in Italian, submitted twice) allegedly dated 2010 and from ‘Equestrio Italia’ dated 2011, all including a piece of advertising showing the earlier mark on the inner lining of a jacket as shown in the picture below;

Another piece of advertising displays the sign ‘SR’ (extract from the magazine ‘Monsieur’ (in Italian) dated 2009 including a picture showing a pair of trousers bearing the mark ‘SR’ as shown in the picture below.

 Press releases: around 2000 extracts from Italian and foreign press releases (in several languages including English, Italian, Japanese, Turkish and Russian) dated between 1983 to 2018 extensively mentioning the fashion brand ‘STEFANO RICCI’ and the opponent’s products (mainly clothing, shoes, bags, perfumes) bearing the mark ‘STEFANO RICCI’ which are sometimes illustrated. They include extracts from very well-know newspapers in Italy (such as Corriere della Sera or Sole 24 Ore) and in other countries of the world (such as New York Sun, Los Angeles Time, etc.). They also include some videos relating, inter alia, to interviews with the fashion designer Stefano Ricci and to fashion shows (such as Pitti Immagine) where collections of the opponent’s products bearing the brand ‘STEFANO RICCI’ had been shown. However, among these extracts, only a few show also the use of the earlier mark for the relevant goods in Class 25 in the relevant territory, because they are (at least in part) in Italian and thus clearly address the Italian public. In particular, they are the following: (i) extracts dated 2010 from ‘YCCS Magazine’ (in Italian and English), from ‘Firenze Made in Tuscany’ (in Italian and English), from ‘Forte Estate’ (in Italian and Russian), form ‘Gazzetta dell’Economia’ (in Italian), all include the picture below where the earlier mark is depicted on a pocket handkerchief;

(ii) extracts from ‘SNO Magazine’ dated 2015 (in Italian and English) including a picture of trousers bearing the earlier mark, as shown in the picture below.

 Invoices: hundreds of invoices addressed to clients located worldwide (including Italy) displaying the sign ‘STEFANO RICCI’ dated between 2011 to 2017 and related to different products including clothing, bags, shoes and perfumes. The earlier mark does not appear in the invoices. However, the opponent provided some invoices related to specific products marked with code numbers PP400 and PP401 (wallets), UF364 and UA17P73G408 (shoes), LUX 74170 (ties), T01901 (trousers) which, according to the picture submitted, bear the earlier mark as shown in the sample pictures below.

In particular, with reference to such products, the opponent submitted:

(i) one invoice dated 2011 for the sale of ties identified with the mentioned code and addressed to a client located in Switzerland;

(ii) 22 invoices dated from 2013 to 2014 related to the sale of shoes identified with the above mentioned codes addressed to clients located worldwide. Only four of them relate to sales (of only 16 pairs of shoes in total) in the relevant territory and are invoiced to Stefano Ricci Luxury Stores SRL;

(iii) 39 invoices dated from 2011 to 2013 related to the sale of trousers identified with the above mentioned codes addressed to clients located worldwide. Only 17 of them relate to sales (of 170 trousers in total) in the relevant territory and are invoiced to Stefano Ricci Luxury Stores SRL (with the exception of six);

(iv) five invoices for the sale of a few wallets in the relevant territory (with the exception of one addressed to a client in the United Kingdom).

 List and images of the opponent’s shops worldwide including the images of the flagship stores in Florence and Milan displaying the brand ‘STEFANO RICCI’. However, the earlier mark does not appear in any of these pictures.

 Catalogues, brochures and lookbooks illustrating the opponent’s goods (including at least part the relevant goods in Class 25) bearing the brand ‘STEFANO RICCI’, in English (sometimes accompanied by correspondent versions in Chinese and Russian) and dated between 2007 and 2019. Some of these documents include images of clothing articles bearing the earlier mark , as shown in the sample pictures below.

Furthermore, some of the catalogues submitted (e.g. the ‘CATS Catalogue’ as indicated by the opponent) display the following signs which shows the same ‘SR’ element of the sign but it is encompassed into a different and very intricate figurative mark.

 Product pictures, undated, related to clothing and footwear articles bearing the earlier mark, as shown in the sample images below.

 Four screenshots from the opponent’s website www.sr-luxury.com, not dated, displaying the earlier mark as shown in the sample pictures below.

 Turnover and sales figures: (i) Affidavit (in Italian and English) signed by a legal representative of the opponent on 20/02/2018 including substantial global turnover figures connected to the sale of ‘STEFANO RICCI’-branded products from 2007 to 2017; (ii) table indicating substantial turnover figures from January 2014 to June 2016 with no indication of any specific brand, product or market concerned; (iii) document including, inter alia, substantial turnover figures connected to the sale of clothing items in Italy in 2015 with no indication of the specific brand under which the goods have been sold; (iv) table including worldwide turnover figures (from 2011 to 2014) divided per country and showing substantial turnover figures in Italy. However, there is no indication of the category of products concerned or of the specific brand under which the goods have been sold.

 Marketing expenditure: (i) Affidavit (in Italian and English) signed by a legal representative of the opponent on 20/02/2018 including figures relating to substantial amounts of expenditure incurred for the promotion of the brand ‘STEFANO RICCI’ from 2001 to 2017; (ii) document showing advertising costs (around EUR 200,000 per year) in Italian magazines and newspapers (including well-know newspapers such as Il Sole 24 Ore e Libero) in 2014 and 2015; (iii) documents including figures related to substantial amounts of marketing expenditure from 2008 to 2012 on Italian and foreign magazines and newspaper. In all these documents there is no mention of the category of products advertised and, with the exception of the affidavit (specifically referring to the brand ‘STEFANO RICCI’), there is no indication of the brand which has been promoted.

Previous decisions of the Office, namely (i) the decision of 05/10/2016, R 198’/2015-1, between the signs and ; (ii) the decision of 11/04/2014, B 2 131 301 between the signs ‘STEFANO RICCI’ and ‘GIANNI RICCI’ and (iii) the decision of 06/03/2015, B 2 329 012, between the signs ‘STEFANO RICCI’ and ‘ROBERTO RICCI’.

For the sake of completeness, it must be noted that the opponent also submitted other documents, which are related to the substantiation of other rights or arguments and do not concern the reputation of the earlier mark .

Assessment of the evidence

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some use of the trade mark, the evidence provides very little information on the extent of such use in the relevant territory (Italy) and in connection with the goods for which reputation has been claimed (clothing and footwear articles and accessories thereof).

In particular, after a detailed analysis of the large volume of press releases and advertisements submitted, the Opposition Division notes that, while the opponent’s brand ‘STEFANO RICCI’ is extensively displayed and mentioned, only in a few extracts (dated 2010 and 2015) which are addressed to the Italian public, does the earlier mak appear in connection with clothing or footwear article.

It is admittedly true that the earlier mark appears in other pieces of advertisements or press release in other languages. For instance, the picture included in the opponent’s observations displaying the depiction of the earlier mark on the inner lining of a jacket as shown in the following picture appears in an exctract from the magazine ‘Boutique Baku’ (in Russian), dated in 2007. However, these extracts clearly cannot support any claim of alleged reputation in the relevant territory.

The turnover figures and marketing expenditure provided do not specifically refer to products bearing the earlier mark and often refer to global sales without indicating the specific product category concerned. This is particularly relevant considering that, as clearly shown in the catalogues, press releases and advertising submitted, the opponent is also (and mostly) selling and advertising clothing and footwear articles bearing other brands, such as the brand ‘STEFANO RICCI’ as a stand alone mark or in combination with a figurative element depicting the head of an eagle as shown in the sample pictures below.

Also the invoices do not demonstrate any significant turnover generated by the sale of products bearing the earlier mark. The evidence submitted only demonstrates that from 2011 to 2014 a very limited amount of products bearing the earlier mark has been sold in the relevant territory, namely 16 pairs of shoes and 170 trousers. It is true that other invoices addressed to clients based outside the relevant territory show sales of products (e.g. ties) bearing the earlier mark. However, these other invoices, despite demonstrating a use of the earlier mark for exportation purposes, cannot be of support in demonstrating any significant degree of knowledge of the earlier mark by the public in Italy.

Although the screenshots of the opponent’s website display the earlier mark, they are not dated. Furthermore, the opponent did not provide information concerning the number of visits of its website and the demography of the visitors. Therefore, these screenshots, by themselves, cannot be conclusive of any degree of knowledge of the earlier mark in the relevant territory.

Similar considerations apply for the catalogues, brochures and lookbooks submitted. Admittedly, some of them bear the earlier mark and/or the sign (encompassing the earlier mark along with additional very significant figurative elements). However, even assuming that the sign could be, hypotetically, considered equivalent to the earlier mark , all these documents are in English (sometimes accompanied by versions in Chinese and Russian) and the opponent did not provide any information concerning the extent and the country of their diffusion. Moreover, the Opposition Division notes that the use of this sign alters the distinctive character of the sign as registered as the additional intricate figurative elements greatly alter the perception of the sign.

In conclusion, the evidence as a whole is, therefore, not appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, is not sufficient to support a finding of reputation of the earlier mark in Italy.

Considering all the above, contrary to the opponent’s view, the limited degree of exposure of the earlier mark in the relevant territory, as demonstrated by the evidence submitted, cannot lead to a finding that the reputation of the opponent’s brand ‘STEFANO RICCI’ in the relevant territory has been transferred to the earlier mark . In this respect, the opponent refers to a previous decision of the Boards of Appeals stating that this transfer of reputation actually occurred (05/10/2016, R 1980/2015-1, SR (fig.) / SR (fig.) et al.). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

Although the Opposition Division carefully considered the cited decision, taking into account the evidence submitted (as above listed and analysed) and the different relevant date (25/03/2018 instead of 16/06/2014) by which the opponent should have demonstrated reputation of the earlier mark, it is deemed, that an analogous outcome is not possible in the present proceedings since it is not supported by sufficient evidence.

Under these circumstances and in the absence of any independent and objective evidence that would enable solid conclusions to be drawn about the degree of recognition of the earlier mark by the relevant public before the relevant date, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition as far as it is based on this ground must be rejected.

The examination of the opposition will continue on the basis of the remaining ground invoked by the opponent, namely Article 8(4).

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

The opponent bases its opposition on earlier rights 5, domain name ‘www.sr-luxury.com’ and others, used in the course of trade in the territories of Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom, and on earlier right 6, non-registered trade mark ‘SR’, used in the course of trade in the territory of Italy.

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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the applicable law

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

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. Furthermore, according to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit any information on the legal protection granted to the type of rights invoked, namely domain names (earlier rights 5), insofar as the territories of Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom are concerned. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent, insofar as the earlier rights 5 in the territories mentioned above are concerned.

As far as the earlier rights 5 and 6 for the territory of Italy are concerned, the opponent refers to Article 12(1)(a) and (b) of the Italian Intellectual Property Code, of which it provided a version in the original language and a translation in the language of the proceeding (i.e. English).

Article 12(1)(a) and (b) of the Italian Intellectual Property Code prevents the registration as trade marks of signs that at the date of filing the application:

(a) are identical or similar to a sign already known as a trade mark or distinguishing sign of goods or services manufactured, marketed or lent by others for identical or similar goods or services, if due to the identity or similarity between the signs and the identity or affinity between the products or services may cause a risk of confusion for the public, which may also consist in a risk of association between the two signs.[…]

b) are identical or similar to a sign already known as company, name or company name, sign and domain name used in economic activity, or other distinctive sign adopted by others, if due to the identity or similarity between the signs and the identity or affinity between the business activity exercised by them and the products or services for which the trademark is registered can lead to a risk of confusion for the public, which may also consist in a risk of association between the two signs.[…]

Consequently, the criteria with regard to Article 8(1)(b) EUTMR can be applied when examining whether the earlier rights 5 and 6 invoked confer on the opponent the right to prohibit the registration of the contested sign (28/05/2018, R 2044/2017-4, CDK Global (fig.) / GLOBAL et al., § 30 and § 48).

The opponent’s right vis-à-vis the contested trade mark

Likelihood of confusion

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

As seen above, the similarity of the goods or services is a condition for a finding of likelihood of confusion.

The opponent’s domain names (earlier rights 5) and the opponent’s non-registered trade mark ‘SR’ (earlier right 6) has been claimed to be used in the course of the trade with a view of reaching the threshold of ‘more than mere local significance’ (as required by Article 8(4) EUTMR) for:

(earlier rights 5)

Promoting and selling clothing articles and accessories

(earlier right 6)

Promoting and selling menswear, clothing and accessories for men

The opposition is directed against the following goods of the contested trade mark:

Class 14: Watch bands; chronometric instruments; watch cases [parts of watches]; presentation boxes for watches; stopwatches; chronometers; clocks and watches, electric; watches; atomic clocks; wristwatches.

It is clear that the opponent’s activity (promoting and selling clothing and accessories) is manifestly dissimilar to the contested goods, being horological and chronometrical instruments and parts and accessories thereof. As already mentioned above, the purpose of these goods is different. While clothing and accessories are conceived to cover and protect the body, the purpose of timepieces is to show time. The same reasoning applies for the contested parts and accessories of horological and chronometrical instruments. Furthermore, they have different producers and are usually distributed through different channels. They are not complementary or in competition. Indeed, the fact that the goods are fashion articles is not a factor of similarity in the context of an analysis under Article 8(1)(b) EUTMR (27/06/2019, T-385/18, ECLI:EU:T:2019:449, Aldi v EUIPO - Crone (CRONE), § 50-53; 27/11/2017, R 369/2017-1, agua dulce (fig.) /RADO Water-Sealed (fig.), § 20).

Since the goods/business activities are clearly dissimilar, one of the necessary conditions is not fulfilled, and the opposition must be rejected also insofar as it is based on this ground.

Conclusion

Considering all the above, the opposition is rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Nicole CLARKE

Rosario GURRIERI

Erkki MÜNTER

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.