OPPOSITION No B 3 063 892

Nina Ricci (Société à Responsabilité Limitée), 39, Avenue Montaigne, 75008 Paris, France (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Talat Matbaacilik Ve Derimamulleri Ticaret Anonim Sirketi, Esenyurt Yolu, Erguvan Sokak, No:4, Avcilar – Istanbul, Turkey (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq. 3º Izq., 28020 Madrid, Spain (professional representative).

On 17/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No 3 063 892 is partly upheld, namely for the following contested goods in Classes 16 and 18:

Class 16: Pens; stationery, office stationery; writing and drawing implements; office requisites; pencils; painting pencils; paper and cardboard; drawing papers; writing paper, copying paper; stickers [stationery]; paper products for stationery purposes; adhesives for stationery purposes, erasers; adhesive tapes for stationery purposes; pencil holders; agendas; calendars; address books; artists materials; cardboard cartons [artists materials], drawing materials, paint rollers and paintbrushes for painting; printed publications; printed matter; books, magazines, newspapers, bill books, printed dispatch notes, printed vouchers; posters; photographs [printed]; instructional and teaching material [except furniture and apparatus]; calendars; books; cardboard boxes; printing blocks and types; paintings; notebook paper; note papers; chalkboards, watercolors [paintings].

Class 18: Handbags; goods made of leather or imitations of leather, namely carry-all bags; goods made of leather or imitations of leather, namely bags; goods made of leather or imitations of leather, namely carrying cases, attaché cases, clutch purses, backpacks, book bags, sports bags, bum bags, shopping bags, school bags; goods made of leather or imitations of leather, namely trolley duffels, wheeled bags and wheeled shopping bags; goods made of leather or imitations of leather, namely purses, wallets; goods made of leather or imitations of leather, namely baby carrying bags; backpacks for carrying babies.

2. European Union trade mark application No 17 885 512 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 (in Classes 16 and 18) of European Union trade mark application No 17 885 512 (figurative mark: ). The opposition is based on European Union trade mark registration No 3 540 333 and on French trade mark registration No 1 334 796 (both for the word mark: ‘NINA RICCI’). The opponent invoked Article 8(1)(b) EUTMR for both trade marks and Article 8(5) EUTMR for the European Union trade mark registration.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely the above cited European Union and French trade mark registrations.

The date of filing of the contested application is 10/04/2018. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and in France from 10/04/2013 to 09/04/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

European Union trade mark registration No 3 540 333

Class 18: Leather and imitations of leather; animal skins, hides; trunks and traveling bags; umbrellas, parasols, canes and walking sticks; whips, harness and saddlery; pocket wallets; chain-mesh purses, not of precious metal; handbags, backpacks, wheeled bags; travel bags, beach bags, school bags; vanity cases (not fitted); collars or covers for animals; net shopping bags and shopping bags; bags (envelopes, pouches) of leather, for packaging.

Class 25: Clothing, footwear, headgear, shirts, clothing of leather or of imitation leather, belts (clothing), furs (clothing), gloves (clothing), scarves, neckties, hosiery, socks, underwear, swimwear; cap peaks; visors [hatmaking].

French trade mark registration No 1 334 796

Class 16: Pens.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 05/06/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 10/08/2019 to submit evidence of use of the earlier trade marks. This time limit was extended until 10/10/2019 (see Office´s letter of 06/08/2019). On 10/10/2019, within the time limit, the opponent submitted evidence of use.

Furthermore, evidence previously submitted by the opponent (see opponent’s letter of 02/04/2019) has also been taken into account.

The evidence to be taken into account is the following (opponent’s submissions of 02/04/2019).

• Extracts from the official French PTO (INPI) database (regarding French trade mark registration No 1 334 796) and from the TMView database (regarding EUTM No 3 540 333), together with the last renewal certificates, accompanied by an English translation (attachment 1).

• List of worldwide ‘NINA RICCI’ trade marks and their country codes (attachment 2).

• Decision of the Board of Appeal (13/04/2015, R 1021/2014‑1, Roméo has a Gun by Romano Ricci (FIG. MARK) / NINA RICCI et al.) (attachment 3).

• Copy of the final judgment of the General Court (15/09/2016, T‑359/15, ROMEO HAS A GUN BY ROMANO RICCI (fig.) / NINA RICCI et al., EU:T:2016:488) for the case cited in attachment 3 (attachment 4).

• Copy of the brief of further facts of 17/06/2013 in opposition proceedings against EUTM No 11 193 604 (07/02/2013, B 2 137 035) (attachment 5).

• Decision of the Spanish PTO on 18/12/2013 on the opposition lodged against Spanish trade mark application No 3 082 336, ‘KARENRICCI’ (attachment 6).

• Decision of the Spanish PTO on 11/12/2012 on the opposition lodged against Spanish trade mark application No 3 035 430, ‘PETIT PALACE RICCI LEALTAD PLAZA’ (attachment 7).

• List of worldwide decisions regarding the well-known character of the opponent’s marks (fashion sector) (attachment 8).

• Sales figures, elaborated by the opponent, for its ‘NINA RICCI’ branded fashion goods in the years 2013, 2015, 2016 and 2017. The list contains figures for different countries worldwide. However, the information has not been divided for different territories and different goods (attachment 9).

• Press clippings from publications in the EU (France, Germany, Italy, Spain, UK) and the USA from 2014-2018 (attachment 10).

• ‘NINA RICCI’ fashion catalogues for different seasons – attachments 11.a) to 11.f) (attachment 11).

• Articles published in Italy between 2004 and 2013 (inclusive) regarding goods in Classes 14, 18 and 25 (attachment 12).

• Articles published in the Spanish press (fashion magazine ESTILO (attachment 13); Atresmedia, ESTILO Magazine, EL MUNDO, HOLA.com, Tendencias, Vanitatis (attachment 14)); article published in the online magazine https://www.harpersbazaar.com/es from 2019 (attachment 15); article published in the online magazine https://www.redcarpet-fashionawards.com showing celebrities dressed in ‘NINA RICCI’ clothes (attachment 16). These attachments (13-16) show that the Spanish queen wears ‘NINA RICCI’ clothing.

The following documents come from the opponent’s submissions of 10/10/2019.

• Sales figures, elaborated by the opponent for ‘NINA RICCI’ goods. According to the opponent, these concern the sale of goods in Classes 18 and 25 for the years 2014 and 2018. The list contains figures for different countries worldwide. However, the information has not been divided for the different territories and the different goods (document 1).

• International NINA RICCI catalogues and brochures, in particular for clothing, and with some information about handbags (2013-2018) (document 2).

• Lists of fashion products for the period 2014-2018 (document 3).

• Invoices for the years 2013-2018 (for the UK, Netherlands, Germany, Spain, France, Belgium, Norway, Italy, Portugal, Denmark, Cyprus and Austria) mostly for clothing and occasionally for handbags (document 4).

• International ‘NINA RICCI’ catalogues and brochures for 2016-2018 – in particular for stationary items (document 5).

• Various invoices for ‘NINA RICCI’ goods in France, including pens (2013-2018) (document 6).

• Screenshots of internet searches demonstrating the use of the ‘NINA RICCI’ trade mark on pens, marketed in France through distributors such as Amazon, Fnac or Rakuten (document 7).

A large number of the attachments and documents submitted by the opponent are of very limited significance, since they do not provide any information regarding the extent to which the earlier trade marks are used (e.g. attachments 1, 2, 10-16 and documents 2, 3, 5 and 7). Other decisions or national judgments made regarding other trade marks, and on the basis of, possibly, different documents, cannot easily have an indicative effect on the case at issue. Because of their limited informative value, they are at most suitable as supplementary material for otherwise relevant documents, but they cannot be considered evidence in themselves. Moreover, details of which documents were presented in these cases were not supplied, or whether the information still applies currently and to the same extent (some of the cases are from a long time ago – outside the relevant time period – and the judgment of the General Court refers to a contested application from 17/09/2012). This also applies to attachment 9 and document 1. Firstly, it should be noted that this information originates from the opponent itself, and not from an independent third party. Secondly, it is not clear whether the sales figures relate to the opponent in its entirety (including all its trade marks), or only to the signs under evaluation. Thirdly, even if – in the opponent’s favour – it is assumed that these figures refer only to the ‘NINA RICCI’ trade marks claimed, the information is not divided with regard to the goods in question. As this was not done, the information in the form in which it was submitted cannot be evaluated with any degree of security. The opponent should have provided the Office with a clear overview of the earlier trade marks and the individual goods. The fact that this is not the case must be taken into account.

The numerous invoices in documents 4 and 6 – mostly for clothing and occasionally for handbags (and in France also for pens) – are significant. They are for different recipients within the European Union and France, are largely from the relevant period, have a sufficient amount in terms of quantity, and include sales prices that suggest a sustainable use of the earlier trade marks. Therefore, they are able to contribute to the overall impression of use of the earlier trade marks.

Other documents that could help prove the use of the earlier trade marks, such as advertising expenses (divided between the individual signs and the individual goods); opinion polls; traffic surveys; contributions from professional associations and/or extracts from tax and/or commercial balance sheets were not submitted.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C 40/01, Minimax, EU:C:2003:145; 12/03/2003, T 174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade marks for the following goods:

European Union trade mark registration No 3 540 333

Class 18: Handbags.

Class 25: Clothing.

French trade mark registration No 1 334 796

Class 16: Pens.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

European Union trade mark registration No 3 540 333

Class 18: Handbags.

Class 25: Clothing.

French trade mark registration No 1 334 796

Class 16: Pens.

The contested goods in Classes 16 and 18 are the following:

Class 16: Paper and cardboard; paper and cardboard for packaging and wrapping purposes, cardboard boxes; paper towels; toilet paper; paper napkins; plastic materials for packaging and wrapping purposes; printing blocks and types; bookbinding material; printed publications; printed matter; books, magazines, newspapers, bill books, printed dispatch notes, printed vouchers, calendars; posters; photographs [printed]; paintings; stickers [stationery]; postage stamps; stationery, office stationery, instructional and teaching material [except furniture and apparatus]; writing and drawing implements; artists materials; paper products for stationery purposes; notebook paper; note papers; drawing papers; adhesives for stationery purposes, pens, pencils, erasers, adhesive tapes for stationery purposes, cardboard cartons [artists materials], writing paper, copying paper, paper rolls for cash registers, drawing materials, chalkboards, painting pencils, watercolors [paintings]; office requisites; paint rollers and paintbrushes for painting; agendas; covers for agendas; cases of leather for agendas and weekly planners; pencil holders; calendars; books; address books.

Class 18: Unworked or semi-worked leather and animal skins, imitations of leather, stout leather, leather used for linings; goods made of leather or imitations of leather, namely carry-all bags, carrying cases, attaché cases, briefcase-type portfolios, cases for keys, key wallets, wallets, card wallets, purses, clutch purses, toilet bags, kit bags, baby carrying bags, backpacks, book bags, sports bags, bum bags, handbags, shopping bags, school bags; goods made of leather or imitations of leather, namely garment carriers for suits and dresses, backpacks for carrying babies, infant carriers worn on the body, boxes made of leather, hat boxes and trolley duffels, wheeled bags and wheeled shopping bags; bags, wallets, boxes and trunks made of leather or stout leather; keycases, trunks [luggage], suitcases; umbrellas; parasols; sun umbrellas; walking sticks; whips; harness; saddlery; stirrups; straps of leather (saddlery).

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 16

Pens are identically contained in both lists of goods.

The contested stationery, office stationery; writing and drawing implements; office requisites include, as broader categories, the opponent’s pens. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested pencils; painting pencils are included in the broad category of the opponent’s pens. Therefore, they are identical.

The contested paper and cardboard; drawing papers; writing paper, copying paper; agendas; calendars; address books; printed publications; printed matter; books, magazines, newspapers, bill books, printed dispatch notes, printed vouchers; posters; photographs [printed]; instructional and teaching material [except furniture and apparatus]; calendars; books; printing blocks and types; paintings; notebook paper; note papers; chalkboards, watercolors [paintings] have the same purpose, distribution channels and public as the opponent’s pens. Books include colouring books, activity books, diaries and address books. In stationery shops and sections of department stores, these goods can be found next to pens and other writing implements, and they target the same consumers. Furthermore, it is not uncommon for these goods to be sold together in sets. Therefore, they are similar.

The contested stickers [stationery]; paper products for stationery purposes; adhesives for stationery purposes, erasers; adhesive tapes for stationery purposes; pencil holders are at least similar to the opponent´s pens, as they have the same distribution channels, public and producer.

The contested artists materials; cardboard cartons [artists materials], drawing materials, paint rollers and paintbrushes for painting; cardboard boxes have the same purpose, distribution channels, public and producers as the opponent’s pens. Therefore, they are similar.

The remaining contested paper and cardboard for packaging and wrapping purposes, paper towels; toilet paper; paper napkins; plastic materials for packaging and wrapping purposes; bookbinding material; postage stamps; paper rolls for cash registers, covers for agendas; cases of leather for agendas and weekly planners have different natures and purposes to the opponent’s goods. Their distribution channels, public and producers are also different, and they are neither complementary nor in competition. Consumers would not assume that these goods come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 18

Handbags are identically contained in both lists of goods.

The contested goods made of leather or imitations of leather, namely carry-all bags; goods made of leather or imitations of leather, namely bags include, as broader categories, the opponent’s handbags. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested goods made of leather or imitations of leather, namely carrying cases, attaché cases, clutch purses, backpacks, book bags, sports bags, bum bags, shopping bags, school bags; goods made of leather or imitations of leather, namely trolley duffels, wheeled bags and wheeled shopping bags are at least similar to the opponent´s handbags as they have the same distribution channels, public and producers.

The contested goods made of leather or imitations of leather, namely purses, wallets have the same distribution channels, public and producers as the opponent´s clothing. Therefore, they are similar.

The contested goods made of leather or imitations of leather, namely baby carrying bags; backpacks for carrying babies have the same distribution channels, public and producers as the opponent´s clothing. Therefore, they are similar to a low degree.

The remaining contested unworked or semi-worked leather and animal skins, imitations of leather, stout leather, leather used for linings; goods made of leather or imitations of leather, namely briefcase-type portfolios, cases for keys, key wallets, card wallets, toilet bags, kit bags, goods made of leather or imitations of leather, namely garment carriers for suits and dresses, infant carriers worn on the body, boxes made of leather, hat boxes, boxes and trunks made of leather or stout leather; key cases, trunks [luggage], suitcases; umbrellas; parasols; sun umbrellas; walking sticks; whips; harness; saddlery; stirrups; straps of leather (saddlery) have different natures and purposes to the opponent’s goods and are neither complementary to nor in competition with them. Their distribution channels, public and producers are also different. Consumers would not assume that these goods come from the same undertaking or economically linked undertakings. Therefore, 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 found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

NINA RICCI
Earlier trade marks	Contested sign

The relevant territories are the European Union and France.

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.

In certain territories, such as those countries where Italian is not understood, none of the signs would be perceived as commonly-used first names or surnames. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, such as the public in France.

The earlier trade marks are word marks, which are protected in all typefaces.

The contested sign is a figurative mark. The figurative element is a stylised depiction of a running horse placed between the word elements ‘FABIO’ and ‘RICCI’. The word elements are written in standard upper-case letters. All these elements are depicted in black.

All the signs will be understood as unusual names and surnames by the relevant French public. Since they have no meaning for the goods, they are 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).

Visually, the signs have the surname ‘RICCI’ in common. They differ in their forenames, ‘NINA’ and ‘FABIO’ respectively, and in the figurative depiction of a running horse of the contested sign. Therefore, the signs are similar to an average degree.

Aurally, the figurative element will not be pronounced. The signs coincide as regards their surnames ‘RICCI’ and differ in the forenames ‘NINA’ and ‘FABIO’. The degree of aural similarity is slightly higher than the visual similarity, namely above average.

Conceptually, the relevant French public will perceive the different individuals, ‘NINA’ and ‘FABIO’, are from the same family, named ‘RICCI’. The depiction of the horse in the contested sign leads to differences in the concept. Therefore, the signs are conceptually similar to an average degree.

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 marks enjoy enhanced distinctiveness. As it has not made any limitations as regards this enhanced distinctiveness, the Office assumes, in the opponent’s favour, that this should be applied to both earlier trade marks. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 18).

During the relevant period to file further facts and evidence, on 02/04/2019, the opponent submitted the evidence listed above, namely attachments 1-16.

As already mentioned, a large number of the documents are of very limited significance since they do not provide any information regarding the extent to which the earlier trade marks are used (e.g. attachments 1, 2, 10-16). Other decisions or national judgments regarding other trade marks, and on the basis of, possibly, different documents, cannot easily have an indicative effect on the case at issue. Because of their limited informative value, they are at most suitable as supplementary material for otherwise relevant documents, but they cannot be considered evidence in themselves. This also applies to attachment 9. Firstly, it should be noted that this information originates from the opponent itself, and not from an independent third party. Secondly, it is not clear whether the sales figures relate to the opponent in its entirety (including all its trade marks) or only to the signs under evaluation. Thirdly, even if – in the opponent’s favour – it is assumed that these figures refer only to the ‘NINA RICCI’ trade marks claimed, the information is not divided with regard to the goods in question. As this was not done, the information in the form in which it was submitted cannot be evaluated with any degree of security. The opponent should have provided the Office with a clear overview of the earlier trade marks and the individual goods. The fact that this is not the case must be taken into account.

Other documents that could help prove the use of the earlier trade marks, such as advertising expenses (divided between the individual signs and the individual goods); opinion polls; traffic surveys; contributions from professional associations and/or extracts from tax and/or commercial balance sheets were not submitted.

It must be taken into account that the requirements for proving increased distinctiveness/reputation are significantly higher than those for proving use of the earlier trade marks.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. The earlier trade marks, as a whole, have 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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

For the purposes of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2004:197, § 38).

The contested goods are partly identical, partly similar to varying degrees, and partly dissimilar.

According to Article 8(1)(b) EUTMR, similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are partly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in regard to those goods.

Taking into account the average degree of visual and conceptual similarity, the above-average degree of aural similarity, the normal degree of distinctiveness of the earlier trade marks and the identity or similarity of the goods, there is, even for the public with a high degree of attention, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This applies even more so, when the degree of attention of the public is only average. It also applies for the goods which are only similar to a low degree, because of the visual, aural and conceptual similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s earlier rights. 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.

Contrary to the applicant’s opinion, the differences between the signs are not sufficient to distinguish them clearly from each other. They will be perceived as coming from the same or economically linked undertakings. As mentioned above, the figurative element of the contested sign – the depiction of a running horse – cannot overcome the similarity between the signs and, therefore, the likelihood of confusion. The applicant pointed out, that all of the names in the signs were common in Italian. However, the Office has based its decision on the French-speaking public that will have a different perception. Furthermore, the Office refers to a rather similar judgment (01/03/2005, T‑185/03, Enzo Fusco, EU:T:2005:73). In this case, the same surname with different forenames also led to a risk of confusion.

Therefore, the opposition is partly well founded under Article 8(1)(b) 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.

Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

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 must be rejected.

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

The Opposition Division

Claudia MARTINI

Peter QUAY

Martin EBERL

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.