OPPOSITION Nо B 3 058 969

 

Zarco – Fábrica De Calçado, Lda., R. Oliveira Figueiredo, nº 182/202, Lote 7, 3700-202 São João da Madeira, Portugal (opponent), represented by A.G. Da Cunha Ferreira, Lda., Avenida 5 de Outubro, 146-7º, 1050-061 Lisbon, Portugal (professional representative) 

 

a g a i n s t

 

Bridalchique Lda, Rua Professor Correia de Sá 132, 4445-570 Ermesinde, Portugal (applicant).

On 07/07/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 058 969 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 900 803 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 17/07/2018, the opponent filed an opposition against all the goods of European Union trade mark application No 17 900 803 ‘LVSITANO’ (word mark). The opposition is based on EUTM registration No 16 985 285, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

 

a) The goods

 

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

 

Class 25: Footwear.

After a limitation of the applicant on 28/08/2020 (during appeal proceedings -subsequently withdrawn - against the decision taken in multiple opposition case B 3 063 214), the contested goods are the following:

 

Class 25: Suits; dinner suits; shirts for suits; men's suits; leisure suits; dress pants; one-piece suits; three piece suits [clothing]; evening suits; shirts; overshirts; collared shirts; dress shirts; woven shirts; short-sleeve shirts; turtleneck shirts; long-sleeved shirts; trousers; pantsuits; morning coats; cummerbunds; dinner jackets; neckties; ascots (ties); silk ties; dress shoes; evening wear; formalwear; waist belts; belts [clothing]; leather belts [clothing]; belts made out of cloth; coats; heavy coats; jackets [clothing]; casual jackets; blousons; long jackets; camouflage jackets; cardigans; coats of denim; gilets; stuff jackets [clothing]; footwear; skorts; short trousers; culotte skirts; leotards; weatherproof pants; leggings [trousers]; stretch pants; casual footwear; sneakers; rubbers [footwear].

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 goods are identical or at least similar to the opponent’s footwear in the same class. This is because they are either included in the broader category of the opponent’s goods (i.e. as regards the casual footwear; sneakers; rubbers [footwear]), or because in any event they serve the same purpose as the opponent’s goods and share the same distribution channels, public and manufacturers. Footwear indeed serves the same purpose as clothing items: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both. Therefore, these goods are held similar.

  

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 at least similar are directed at the public at large. The degree of attention is considered to be average.

 

c) The signs

 

	LVSITANO
Earlier trade mark	Contested sign

 

 

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

The almost identical verbal element (‘LUSITANA’/’LVSITANO’) is meaningful for part of the relevant public and meaningless for another part: for example, the Portuguese speaking public may understand it inter alia as the older adjective meaning ‘Portuguese’ or the poetic metaphor used by Portuguese writers for ‘Portuguese people’ (see Portuguese Dictionary online Priberam, extracted on 05/07/2021 at https://dicionario.priberam.org/lusitano and https://dicionario.priberam.org/lusitana), or as a surname. The spelling with a letter ‘V’ instead of the letter ‘U’ in the contested sign will not alter this meaning as it would in any event be perceived as a variant (or misspelling) of, if not be misread as, ‘LUSITANO’, thus referring to the same concept. The remaining part of the public will see it in any event as a surname in the earlier mark, on account of its structure (a combination of a forename and a surname, Ana Lusitana, the word ‘ANA’ being understood throughout the relevant territory as a female given name). Consequently, this part of the public is also likely to perceive the contested sign’s verbal element ‘LVSITANO’ as a surname.

In the present proceedings, for reasons of economy of proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public that perceives the meaning of the verbal element ‘LUSITANO/A’ as a family name, since it is considered the perspective from which the likelihood of confusion between them is most likely.

Indeed, the unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements ‘ANA’ and/or ‘LUSITANO/A’ of the signs are considered to have a normal degree of inherent distinctiveness as they have no descriptive or allusive meaning in relation to the relevant goods for the relevant part of the public.

The earlier mark is a figurative sign, containing the verbal elements ‘ANA LUSITANA’ (depicted in a not overly stylised typeface), which as seen above is arbitrary for the relevant public and thus of normal distinctiveness. While it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, however, that consideration cannot apply in every case (12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 26-32). The public is likely to pay more attention to a surname than to a forename (01/03/2005, T‑185/03, Enzo Fusco, EU:T:2005:73, § 54; 28/06/2012, T‑133/09, B. Antonio Basile 1952, EU:T:2012:327, § 49). As the earlier mark’s verbal component ‘ANA LUSITANA’ as such may be perceived as a first name and a family name by the part of the public in the relevant territory taken under analysis, the word ‘LUSITANA’ is likely to attract slightly more attention than the first element.

Above the verbal element is depicted the image of what could be seen as a stylised letter ‘A’, with a very little heart, in a circle. While this figurative component is certainly not devoid of distinctiveness - as it is likewise sufficiently fanciful as a whole for all the goods at issue – and depicted in a bigger size, however, 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). In the present case, the public will certainly refer to the earlier mark by the verbal component ‘(ANA) LUSITANA’, despite the fact that it is significantly smaller in size than the figurative element. For the same reasons, it is considered that the earlier mark has no elements that are more visually eye-catching (dominant) than other elements, the verbal component being in any event co-dominant with the figurative elements.

The contested sign is a pure word mark consisting of the verbal element ‘LVSITANO’. For reasons detailed above, this element is meaningful and has average distinctiveness.

Visually and aurally, the signs are similar to the extent that they coincide in the first six/seven letters (out of eight) of the verbal element ‘L(U/V)SITANA/O’, and its corresponding sound, which is the only verbal element of the contested sign and is the independent second verbal element of the earlier mark. The signs differ in the final letter ‘A/O’ of this element (which, however, may more easily go unnoticed since placed at the ending), in the letter ‘V’ (instead of the letter ‘U’) in the contested sign (which will also go easily unnoticed and will in any event be pronounced as the letter ‘U’, as detailed above) and in the earlier mark’s additional verbal element ‘ANA’, and its sound (which will in any event attract less attention than the term ‘LUSITANA’). Moreover, they visually differ in the relatively standard stylisation of the earlier mark and in its figurative device. However, as explained above, this figurative component will have less impact on the overall visual impression of the sign than the verbal component, and in particular ‘LUSITANA’ of the earlier mark.

Irrespective of the different pronunciation rules in different parts of the relevant territory, the rhythm and intonation are identical for the common seven-letter string of the signs and differ in the first verbal element ‘ANA’ of the earlier mark and the final (eighth) letter ‘-A/-O’ of the coinciding ‘L(U/V)SITAN-’ of both signs.

Despite the abovementioned differences, the coincidence in the distinctive and independent common element ‘LUSITAN(-O/-A)’ of the signs will have a significant impact on the public when encountering the signs. Therefore, the signs are visually and aurally similar to -at least- a below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs contain the verbal element ‘LUSITAN(-A/-O)’ which will likely be perceived as referring to the same surname. The signs mainly differ to the extent that the contested sign contains the additional element ‘ANA’, which may be understood as a first name. The additional concepts in the earlier mark evoked by of the heart (moreover depicted in a very small size), if at all noticed, the additional letter ‘A’ (which will be perceived as the initial of the given name, ‘ANA’) and the basic circle, are not sufficient to establish any significant conceptual dissimilarity, as the attention of the relevant public will be attracted by the arbitrary verbal elements (in particular the surname).

In view of the above, the signs are considered to be conceptually similar to an average degree for the part of the relevant public to which this examination is limited (28/06/2012, T‑133/09, B. Antonio Basile 1952, EU:T:2012:327, § 60).

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 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 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, despite the presence of some weaker elements in the mark, as stated above in section c) of this decision.

 

e) 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 that can be made with the registered mark, and the degree of similarity between the marks, and between the goods or services identified. 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 contested goods are identical or at least similar to the opponent’s goods. The level of attention of the public at large is average and the earlier trade mark’s degree of distinctiveness is normal.

The signs are visually and aurally similar to at least a below-average degree, and they are conceptually similar to an average degree on the account of the coinciding letter string ‘LUSITAN(-O/-A) for the part of the public that perceives it as a surname (and to which this examination is limited).

The overall impressions created by the common element of the signs is that they are similar, as they almost entirely coincide in a distinctive independent element, with the most impact in the earlier mark (and which constitutes almost the entire contested sign).

Furthermore, when examining the possible existence of likelihood of confusion, the Opposition Division must also take into consideration the principle that a likelihood of confusion implies some interdependence among the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the 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). In the present case, it is considered that the identity and similarity of the relevant goods outweighs and offsets the differences between the signs.

Account is also 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).

Moreover, 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 covered are from the same or economically linked undertakings.

The likelihood of confusion includes the likelihood of association. When encountering the contested sign, consumers will associate it with the verbal element of the earlier mark, ‘LUSITANA’. In the present case, the consumer may easily conclude that the (identical or at least similar) goods labelled and offered under the contested sign come from the same undertaking or designer as the earlier mark, or an economically linked undertaking, assuming that the mark designates a new product line of the earlier mark by adding an additional element to the main verbal element of the earlier mark, in order to differentiate categories of products. Therefore, in this case, it cannot be excluded that the signs could be erroneously associated with each other. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the specific type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Bearing in mind all the foregoing, and in view of the fact that the contested sign’s only verbal element almost entirely reproduces the earlier mark’s verbal element with more impact (where it indeed attracts slightly more of the attention of the public than the differing verbal element ‘Ana’ as seen above), it is considered that there is a likelihood of confusion at least on the part of the relevant public taken into analysis. 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.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 16 985 285. It follows that the contested sign must be rejected for all the contested goods.

 

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

 

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Félix ORTUÑO LÓPEZ

Edith Elisabeth VAN DEN EEDE

Chiara BORACE

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.