OPPOSITION No B 3 065 539

Retail Ventures Holding B.V., Hoofdveste 10, 3992 DG, Houten, Netherlands (opponent), represented by Arnold & Siedsma, Amstelplein 1 Rembrandt Toren, 28e verdieping, 1096 HA, Amsterdam, Netherlands (professional representative)

a g a i n s t

Francesco Chiapponi, Via Aosta 47, 35142 Padova, Italy (applicant), represented by Ufficio Veneto Brevetti, Via Sorio 116, 35141 Padova, Italy (professional representative).

On 25/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 539 is upheld for all the contested goods, namely

Class 18: Trunks and travelling bags; Vanity cases; Umbrellas; Wallets; Purses; Casual bags; Handbags; shoulder bags; Bumbags; Backpacks; key holders.

Class 25: Clothing; Shoes; Headgear; Sweaters; Undershirts; Underwear; Stockings; Socks; Trousers; Skirts; Shirts; Topcoats; Jeans.

2. European Union trade mark application No 17 920 210 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 920 210 ‘LIVED’. The opposition is based on, inter alia, Benelux trade mark registration No 864 774 ‘LIV’. 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.

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 Benelux trade mark registration No 864 774 ‘LIV’.

a) The goods

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

Class 14: Precious metals and their alloys and products made therefrom or coated therewith (not included in other classes); jewelry, costume jewelry, precious stones; horological and chronometric instruments.

Class 18: Leather and imitations of leather, and goods made thereof as far as not included in other classes; trunks and traveling bags; umbrellas, parasols and walking sticks.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 18: Trunks and travelling bags; Vanity cases; Umbrellas; Wallets; Purses; Casual bags; Handbags; shoulder bags; Bumbags; Backpacks; key holders.

Class 25: Clothing; Shoes; Headgear; Sweaters; Undershirts; Underwear; Stockings; Socks; Trousers; Skirts; Shirts; Topcoats; Jeans.

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 18

The contested terms trunks and travelling bags and umbrellas are identically contained in both lists of goods.

The contested vanity cases and backpacks are highly similar to the opponent’s traveling bags as they have the same nature and purpose (i.e. goods for transporting personal objects), they usually coincide in producer, in relevant public, and distribution channels.

The contested wallets, purses, casual bags, handbags, shoulder bags, and bumbags are similar to the opponent’s traveling bags as they usually coincide in producer, relevant public and distribution channels.

The contested key holders are similar at least to a low degree to the opponent’s traveling bags as they usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 25

The contested goods clothing; shoes; headgear; sweaters; undershirts; underwear; stockings; socks; trousers; skirts; shirts; topcoats; jeans are identical to the opponent’s clothing, footwear, headgear, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

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 for which the degree of attention is average.

c) The signs

LIV	LIVED
Earlier trade mark	Contested sign

The relevant territory is the Benelux countries.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T 33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T 355/02, ZIRH, EU:T:2004:62, § 36).

The Court has confirmed that there is at least a basic understanding of the English language by the general public in the Netherlands (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23).

Since a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public with at least some command of the English language.

Although the earlier word mark ‘LIV’ has no meaning as such, a significant part of the public under consideration will perceive it as ‘LIVE’ given its aural identity with the English word ‘LIVE’ (for example as a misspelling thereof). The word ‘LIVE’ means ‘to be alive; to possess life, either as an animal or as a plant; to be capable of vital functions’ (extracted from Oxford English Dictionary on 23/07/2019 at https://www.oed.com/view/Entry/109300?rskey=Guy0sX&result=3&isAdvanced=false#eid). As this word bears no relation to the relevant goods, it is normally distinctive of such goods.

For the part of the relevant public under consideration, the verbal element ‘LIVED’, which comprises the contested sign, will be meaningful and will be understood as referring to the past tense of the verb ‘LIVE’ (i.e. the simple past or a past participle) as defined above. As this element bears no relation to the relevant goods, it is normally distinctive of such goods.

Visually, the signs coincide in the letters ‘LIV’ (comprising the whole of the earlier mark and the first three letters of the contested sign) and they differ in the letters ‘ED’ placed after the said coinciding element in the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first attracts the attention of the reader. It follows that the relevant consumer will not fail to notice that the contested sign begins with the coinciding letters ‘LIV’.

In view of the above, the signs at issue are considered to be visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘LIV’ and differ in the sound of the letters ‘ED’ of the contested sign.

For the part of the relevant public under consideration, which perceives and pronounces the contested sign as an English word, the sound of both signs at issue is similar: /liv/ and /livd/ taking into account that the final letter ‘D’ of the contested sign will make a relatively soft sound and so will not make a substantial phonetic impression.

Taking the above into account, the signs at issue are held to be phonetically similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the public under consideration, which perceives the contested sign ‘LIV’ to mean ‘LIVE’ (because of its aural identity with ‘LIVE’), there is a semantic link between the signs at issue because both refer to the general concept of living or being alive such that the signs are conceptually similar to a high degree. In this regard, the Office takes into account that it cannot be held that it follows from European Union case-law that conceptual similarity must be based on the visual perception of the mark and not on the phonetic similarity T-501/08 OF 23/09/2011, SEEMORE, EU:T:2011:527,§48).

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 has no meaning for any of the goods in question from the perspective of the relevant public.

Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

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.

For the part of the relevant public that has a command of English the signs at issue are visually similar to an average degree, aurally similar to an above-average degree, and conceptually highly similar. The goods are partly identical and partly similar to varying degrees. The earlier mark possesses normal distinctive character and the level of attention of the relevant consumer is average.

Taking all the relevant factors into account, the Opposition Division concludes that the differences between the signs (by virtue of the letters ‘ED’ at the end of the contested sign) are not enough to counteract the similarities even in relation to the goods that are similar to a low degree. It follows that that there exists a likelihood of confusion for at least the part of the relevant public that has some command of English. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public in the Benelux territories is sufficient to reject the contested application.

It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Benelux trade mark registration No 864 774 ‘LIV’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Catherine MEDINA

Kieran HENEGHAN

María del Carmen COBOS PALOMO

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.