OPPOSITION No B 3 068 347

DDP Design Umbrellas, S.L., Camino Vallin-97, 33203 Gijon, Spain (opponent), represented by Eurokonzern, C/Marceliano Santa María 9-bajo, 28036 Madrid, Spain (professional representative)

a g a i n s t

Vincenzo Romanelli, Via Giosue' Carducci 2, 81030 Orta Di Atella Ce, Italy (applicant).

On 30/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 347 is partially upheld, namely for the following contested goods:

Class 18: Saddlery, whips and apparel for animals; Umbrellas and parasols; Luggage, bags, wallets and other carriers; Leather cloth; Worked or semi-worked hides and other leather; Shoulder belts [straps] of leather; Leatherboard; Studs of leather; Straps made of imitation leather.

Class 25: Clothing; Footwear; Headgear.

2. European Union trade mark application No 17 927 720 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 of European Union trade mark application No 17 927 720 ‘ROMANELLI’ (word mark). The opposition is based on European Union trade mark registration No 2 552 669 (figurative mark). The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 18: Leatherware; umbrellas.

Class 25: Clothing, footwear and headgear, in particular for wet wear.

The contested goods are the following:

Class 18: Leather for shoes; Moleskin [imitation of leather]; Saddlery, whips and apparel for animals; Walking staffs; Umbrellas and parasols; Luggage, bags, wallets and other carriers; Leather cloth; Leather and imitations of leather; Worked or semi-worked hides and other leather; Imitation leather; Shoulder belts [straps] of leather; Leatherboard; Studs of leather; Straps made of imitation leather.

Class 25: Clothing; Footwear; Headgear.

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.

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

The term ‘in particular’ used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

It is also 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.

Contested goods in Class 18

The contested umbrellas are identically contained in both lists of goods (including synonyms).

The contested parasols are similar to the earlier umbrellas, since they have the same nature and purpose (protection against the elements of nature). They also usually coincide in producer, relevant public and distribution channels.

When comparing the contested saddlery, whips and apparel for animals; luggage, bags, wallets and other carriers; leather cloth; worked or semi-worked hides and other leather; shoulder belts [straps] of leather; leatherboard; studs of leather; straps made of imitation leather with the opponent's vague term leatherware which are ‘goods made of leather’, without further examples or an express limitation by the opponent clarifying the term, it cannot be assumed that they have the same purpose, that their methods of use coincide, or that they share the same distribution channels or whether they are in competition or complementary. However their nature can be considered the same as they can be leather goods and it is therefore then reasonable to assume that the goods may be produced by the same companies, given that the required knowhow and machinery (i.e. to cut leather) may also be the same. Therefore, these goods in class 18 are similar to a low degree.

The contested leather for shoes; moleskin [imitation of leather]; leather and imitations of leather; imitation leather are dissimilar to the earlier goods in class 18. The latter are finished goods, whereas the former are raw materials. According to case-law, the raw materials subjected to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). For the same reasons, these contested goods are also dissimilar to the earlier goods in class 25.

The contested walking staffs are dissimilar to the earlier goods in class 18. The goods under comparison differ significantly in their nature and purposes. They target a different public via different distribution channels. They are neither in competition, nor complementary to each other. Even though some of the contested goods are made of leather, the Opposition Division considers that it is not sufficient for finding them similar to the opponent’s goods. Furthermore, their origin of production is different. For the same reasons, these contested goods are also dissimilar to the earlier goods in class 25.

Contested goods in Class 25

The contested clothing; footwear and headgear are identically contained in both lists of goods (including synonyms).

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical and similar to varying degrees are either directed at the public at large (e.g. bags and wallets) or at the specialist public (e.g. leather for shoes targets cobblers).

The general public’s degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price (saddlery for instance is not frequently purchased, and typically can come with a higher price). The specialist public’s degree of attention is high.

3. The signs

	ROMANELLI
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 verbal element ‘Romanelli’, present identically in both signs, will be perceived by a significant part of the relevant public as an Italian surname. However, part of the relevant public will not understand this verbal element to have any meaning.

The earlier mark consists of the verbal element ‘Romanelli’ written in a mildly stylised typeface, whereby the letters ‘R’ and ‘i’ are extended into horizontal parallel lines and the line of the letter ‘R’ underlines the remainder of the verbal element ‘*omanelli’. This verbal element is placed in the middle of a rectangular shape, the upper part and the lower part of which are in black and white respectively. The part of the verbal element’s letters that is represented in the black part is filled (or shaded) in white, whereas the part of its letters that is represented in the white part is written in black. The earlier mark’s figurative element does not convey any specific semantic content. The contested sign has no element that could be considered clearly more dominant than other elements. 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). As a result, the figurative element in the earlier mark will have a lesser impact on the consumer than its verbal element.

Visually, the signs coincide in all the letters of the earlier mark ‘Romanelli’, and only differ in the figurative element of the earlier mark and its stylised typeface which have no counterpart in the contested sign.

Therefore, taking into account the stronger impact of the verbal element of the earlier mark, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of all their respective letters ‘ROMANELLI’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, the verbal element of the earlier mark and the contested sign are identical for the part of the public that perceives ‘Romanelli’ as a surname. As stated previously, the figurative element, only present in the earlier mark, does not convey any semantic content, and is therefore conceptually neutral. For this part of the public, the signs are conceptually identical.

For the part of the public for whom neither of the signs conveys any concept, a conceptual comparison is not possible, and therefore the conceptual aspect does not influence the assessment of the similarity of the signs. This finding is not altered by the fact that the earlier mark has a figurative element, since this element is conceptually neutral.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. The opponent refers to a Spanish trade mark for the same sign it has owned since 1975 thus implying that the earlier mark is well established on the Spanish market. However, it should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). The opponent did not submit any evidence of acquired distinctiveness and therefore the Opposition Division cannot conclude a higher than normal degree of distinctiveness.

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.

5. 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 or services covered are from the same or economically linked undertakings.

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).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The goods in conflict have been found partly identical, partly similar to various degrees and partly dissimilar. The identical and similar (to varying degrees) goods target the public at large whose degree of attention varies from average to high, and the specialist public whose degree of attention is high. The earlier mark enjoys an average distinctive character, which affords it a normal scope of protection in the assessment.

The signs are visually similar at least to an average degree and aurally identical. Conceptually, either they are identical, or a conceptual comparison is not possible.

Against that background, when encountering the trade marks in question, the average consumer may be confused and assume that the goods found to be identical and similar to varying degrees come from the same or economically linked undertakings.

The potentially heightened attentiveness of the relevant public does not call this finding into question. Indeed, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 2 552 669 . It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to varying degrees to those of the earlier mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because these goods are obviously not identical.

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

Nicole CLARKE

Christophe DU JARDIN

Biruté SATAITE-GONZALEZ

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.