OPPOSITION No B 3 068 797

Confecciones San Francisco, S.A., Poligono Industrial Parcela B-1; Ctra. Nacional 340, Km. 260, 30800 Lorca (Murcia), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Nils Sonka, Bäckenweg 1, 96190 Untermerzbach, Germany and Nadja Wunder, Bäckenweg 1, 96190 Untermerzbach, Germany (applicants).

On 24/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 797 is partially upheld, namely for the following contested goods and services:

Class 25: All the goods applied for in this class, except cap peaks; gussets for underwear [parts of clothing]; frames (hat -) [skeletons]; footwear soles; heelpieces for stockings; gussets for stockings [parts of clothing]; gussets for tights [parts of clothing]; shirt yokes; shirt fronts.

Class 35: All the services applied for in this class.

2. European Union trade mark application No 17 934 306 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 934 306 for the word mark ‘NANI’. The opposition is based on, inter alia, Spanish trade mark registration No 2 547 119 for the 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.

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 Spanish trade mark registration No 2 547 119.

a) The goods and services

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

Class 25: Clothing for women, men or children and shoes (except orthopaedic), headwear.

Class 35: Advertising services and help services for the exploitation or address of commercial or industrial companies. import-export, exclusive and representations agencies. retail services in commerce and retail services through worldwide informatic networks of clothes and textile articles in general. services of emission of franchises relative to the aid in the exploitation or address of a commercial company.

The contested goods and services are the following:

Class 3: Toiletries; essential oils and aromatic extracts; cleaning and fragrancing preparations; shampoo; shower gels; deodorants and antiperspirants; shampoo-conditioners; oils for hair conditioning; styling gels; hair spray; hair wax; hair spray; hair masks; hair powder; hair lotion; hair mascara; hair liquids; hair lotion; hair fixers; cosmetics for the use on the hair; hair frosts; hair fixing oil; hair protection gels; shampoo; make-up preparations; non-medicated creams; lotions for cosmetic purposes; moisturising creams, lotions and gels; tissues impregnated with cosmetic lotions; balms, other than for medical purposes; soaps and gels; cosmetics in the form of gels.

Class 21: Cosmetic and toilet utensils and bathroom articles; cosmetic brushes; cosmetic brushes; cosmetic brushes; cosmetic brushes; cosmetic brushes; racks for cosmetics; cosmetic powder compacts; toilet cases; cosmetic sponges; dispensers for facial tissues; applicators for cosmetics; holders for cosmetics; hand tools for the application of cosmetics; ceramic tissue box covers; tissue box covers; dispensers for cosmetics; applicators for cosmetics.

Class 25: Headgear; clothing; footwear; weatherproof clothing; formalwear; muffs [clothing]; leisurewear; caps [headwear]; cap peaks; jackets [clothing]; men’s and women’s jackets, coats, trousers, vests; trousers; culotte skirts; pantsuits; suspenders; knee-high stockings; short-sleeve shirts; tee-shirts; shirts and slips; fleece tops; hooded tops; halter tops; chemise tops; cycling tops; layettes [clothing]; lingerie; petticoats; pants; undershirts; underwear; chemises; underwear; underwear; baby bottoms; pajama bottoms; boy shorts [underwear]; bottoms [clothing]; jockstraps [underwear]; corsets; teddies [underclothing]; sweat-absorbent underwear; garments for protecting clothing; sweatpants; tracksuit bottoms; slips [underclothing]; gussets for underwear [parts of clothing]; wet suits for water-skiing and sub-aqua; hats; frames (hat -) [skeletons]; footwear soles; insoles for footwear; shoe covers, other than for medical purposes; socks and stockings; stockings; tights; heelpieces for stockings; pantie-girdles; stocking suspenders; garters; body stockings; gussets for stockings [parts of clothing]; gussets for tights [parts of clothing]; waistcoats; sweaters; slipovers; turtlenecks; blouses; shirts; shirt-jacs; shirt yokes; shirt fronts; collar protectors; sleep masks; sleepsuits; nighties; nightwear; nighties; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices.

Class 35: Retailing and wholesaling in relation to clothing, cosmetic and toilet utensils, body care preparations; provision of an on-line marketplace for buyers and sellers of goods and services; online ordering services; online mail order in relation to clothing, cosmetic and toilet utensils, body care preparations.

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 3 and Class 21

The contested goods in Class 3 are goods for cosmetic use and personal hygiene, and household cleaning and fragrancing preparations. The contested goods in Class 21 encompass a variety of utensils and articles for cosmetic use, containers and holders for such goods and for cosmetics, as well as bathroom articles and tissue box covers. These categories of contested goods are dissimilar to all the goods and services for which the earlier mark is registered in Classes 25 and 35, since they have nothing relevant in common that could justify finding similarity between them. These contested goods and the opponent’s goods and services are of different natures and have different purposes. Furthermore, they have different methods of use and are neither complementary nor in competition. Moreover, they are usually sold through different distribution channels, and are likely to be produced or provided by different undertakings.

Contested goods in Class 25

The contested headgear; clothing; footwear; weatherproof clothing; formalwear; muffs [clothing]; leisurewear; caps [headwear]; jackets [clothing]; men’s and women’s jackets, coats, trousers, vests; trousers; culotte skirts; pantsuits; suspenders; knee-high stockings; short-sleeve shirts; tee-shirts; shirts and slips; fleece tops; hooded tops; halter tops; chemise tops; cycling tops; layettes [clothing]; lingerie; petticoats; pants; undershirts; underwear; chemises; underwear; underwear; baby bottoms; pajama bottoms; boy shorts [underwear]; bottoms [clothing]; jockstraps [underwear]; corsets; teddies [underclothing]; sweat-absorbent underwear; garments for protecting clothing; sweatpants; tracksuit bottoms; slips [underclothing]; wet suits for water-skiing and sub-aqua; hats; socks and stockings; stockings; tights; pantie-girdles; stocking suspenders; garters; body stockings; waistcoats; sweaters; slipovers; turtlenecks; blouses; shirts; shirt-jacs; sleepsuits; nighties; nightwear; nighties; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices are identical to the opponent’s clothing for women, men or children and shoes (except orthopaedic), headwear, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or are included in, these contested goods.

The contested insoles for footwear; shoe covers, other than for medical purposes and collar protectors are fittings for final products, namely footwear and clothing respectively, and used by the general public. These goods are similar to the opponent’s shoes (except orthopaedic) or clothing for women, men or children, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested sleep masks are similar to a low degree to the opponent’s clothing for women, men or children which also includes nightwear as they usually coincide in producer and distribution channels.

The contested cap peaks; gussets for underwear [parts of clothing]; frames (hat -) [skeletons]; footwear soles; heelpieces for stockings; gussets for stockings [parts of clothing]; gussets for tights [parts of clothing]; shirt yokes; shirt fronts are dissimilar to all the goods for which the earlier mark is registered in Class 25. Although there is a degree of complementarity between some of these goods and the opponent’s clothing for women, men or children and shoes (except orthopaedic), headwear, it is not sufficient to find similarity between these contested goods and the opponent’s goods in Class 25. These contested goods are parts and fittings for clothing, footwear or headgear that target mainly manufacturers of clothes, footwear and headgear, not end users. They have different natures and purposes; they are usually distributed through different channels and they are manufactured and provided by different undertakings. The dissimilarity between these contested goods and the opponent’s services in Class 35 is even more evident, since the latter have less in common with these contested goods than the opponent’s goods in Class 25. Indeed, although the opponent’s services include retail of ‘textiles articles in general’, these do not necessarily cover the aforementioned parts and fittings for clothing, footwear or headgear.

Contested services in Class 35

The contested retailing in relation to clothing and the opponent’s retail services in commerce and retail services through worldwide informatic networks of clothes are identically contained in both lists of services (including synonyms).

The contested retailing and wholesaling in relation to clothing, cosmetic and toilet utensils, body care preparations and online mail order in relation to clothing, cosmetic and toilet utensils, body care preparations are identical or at least similar to the opponent’s retail services in commerce and retail services through worldwide informatic networks of clothes. For example, the contested retailing in relation to clothing refers to the same business activity as the opponent’s services. The contested wholesaling in relation to clothing is similar to the abovementioned opponent’s services since the goods that these services relate to are identical. Wholesaling is selling goods to other undertakings (retailers) which then sell the goods to end consumers. Even though the relevant public and distribution channels are different, these services have the same nature and purpose and they are complementary. Moreover, wholesalers sometimes also provide retail services and, therefore, the commercial origin of these services can be the same.

The contested provision of an on-line marketplace for buyers and sellers of goods and services and online ordering services and the opponent’s retail services in commerce and retail services through worldwide informatic networks of clothes and textile articles in general show a certain degree of similarity as the relevant public may be the same, either as a prospective buyer or seller, and the purpose of the services, broadly speaking, may be the same, facilitating the sale of goods or procuring goods for others. Therefore, these services are similar to a low degree.

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 and services 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. In particular, the contested wholesaling in relation to clothing, cosmetic and toilet utensils, body care preparations are not solely directed at the professional public. Such services are also provided to the public at large, for example, in chain stores where intermediaries, retailers or the general public, can purchase goods in larger quantities and enjoy a discounted price of the goods.

The public’s degree of attention varies from average to somewhat above average, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	NANI
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 contested sign is composed of the word ‘NANI’. Besides other meanings that may be perceived in this word, for example an informally used version of the Spanish word niñera meaning ‘nanny’, a sizeable part of the relevant public will perceive ‘NANI’ as an uncommon female forename or as a nickname/moniker. The assessment of the opposition proceeds on this basis.

When the word ‘NANI’ is perceived in conjunction with the word ‘JIMENO’, as is the case for the earlier mark, the relevant public will perceive the earlier mark as a female forename ‘NANI’ followed by the surname ‘JIMENO’.

Since the concepts of the names are fanciful, they are inherently distinctive in relation to the goods and services at issue.

Conceptually, both signs are perceived as referring to a woman called ‘NANI’ by her first name or nickname. This name is unusual for the relevant public. Notwithstanding the impact of the surname, which is present in the earlier mark, and even though the surname is not very common, the signs are conceptually similar to an average degree.

Visually and aurally, the signs coincide in the word ‘NANI’, which is the only element of the contested sign and the first word of the earlier mark, and its sound. The signs differ in the earlier mark’s second word ‘JIMENO’.

Therefore, the signs are visually and aurally similar to an average degree.

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 and services 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

The interdependence principle is of crucial importance for the assessment of likelihood of confusion. In the present case, the signs coincide in the element ‘NANI’, which is the first element of the earlier mark. The signs are visually, aurally and conceptually similar to an average degree. The presence of the word ‘NANI’ is likely to focus the attention of the relevant public, given that it is an uncommon name in Spain.

Part of the contested goods and services are identical or similar (to varying degrees) to the opponent’s goods and services. They target the public at large and business customers whose degree of attention varies from average to above average. The earlier mark has average distinctive character, which affords it a normal scope of protection in the assessment.

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.

In this regard, it has to be pointed out that it is common practice on the relevant market of consumer products for undertakings to make variations of their trade marks, for example by adding verbal elements to them, in order to denote new product lines, or to endow their trade mark with a new fashionable image. Therefore, when encountering the conflicting signs, the relevant public is likely to mentally register the fact that they coincide in the unusual name ‘NANI’ and perceive the contested sign as a sub-brand of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the similarities between the signs are sufficient to cause at least a part of the public, even in the case of an above-average level of attention, to believe that the contested goods and services found to be identical or similar (to varying degrees) come from the same or economically linked undertakings, especially due to its imperfect recollection of the signs.

Considering all the above, there is a likelihood of confusion on the sizeable part of the public that perceives ‘NANI’ as a name, and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 547 119. Given that a likelihood of confusion for a substantial part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark. As regards the goods and services that are similar to a low degree, it is recalled that 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). In the present case, the similarity between the signs is sufficient to outweigh the remote degree of similarity between some of the goods and services, and a likelihood of confusion exists also in relation to them.

The rest of the contested goods are dissimilar. As similarity of goods 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.

The opponent has also based its opposition on European Union trade mark registration No 12 610 093 for the figurative mark , which is identical to the one that has been compared. Although it covers a broader scope in that it also covers wholesaling of all kinds of ready-made clothing, footwear and headgear in Class 35 and distribution, transport and storage of all kinds of ready-made clothing, footwear and headgear in Class 39, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Indeed, wholesaling of all kinds of ready-made clothing, footwear and headgear is not more similar to the remaining contested goods in Classes 3, 21 and 25 than retail services in commerce and retail services through worldwide informatic networks of clothes and textile articles in general in relation to which the comparison has been carried out in section a) of this decision. The aforementioned services in Class 39 are dissimilar to all goods for which the opposition has already been rejected. Transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B, whereas distribution services imply moving goods from one central point to different points of sale. These services are provided by specialist transport and distribution companies whose business is not the manufacture and sale of the goods that are transported and distributed. Storage services refer to services whereby a company’s merchandise is kept in a particular place for a fee. The aforementioned services in Class 39 differ from the goods for which the opposition has already been rejected in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar.

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

The Opposition Division

Solveiga BIEZA

Christophe DU JARDIN

Ferenc GAZDA

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.