OPPOSITION No B 3 082 796

Sandro Andy, société par actions simplifiée, 150 boulevard Haussmann, 75008 Paris, France (opponent), represented by Sodema Conseils S.A., 16 rue du Général Foy, 75008 Paris, France (professional representative)

a g a i n s t

Alessandro Rahuel Sharma, Schleißheimerstr. 118, 80797 München, Germany and Marla Luise Linke, Schleißheimerstr. 118, 80797 München, Germany (applicants).

On 11/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 796 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 972 402 ‘Malesandro’ (word mark). The opposition is based on international trade mark registration No 1 371 455 designating the European Union (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 9: Eyeglasses, sunglasses, spectacle frames, spectacle cases.

Class 14: Jewelry, precious stones; timepieces and chronometric instruments.

Class 18: Leather and imitations of leather; purses, coin purses (not of precious metals), key cases (leather goods), credit card cases (wallets), briefcases, wallets, everyday bags, handbags, clutch bags, carry-all bags, small bags, shoulder bags, beach bags, luggage, shopping bags, sports bags, travel bags, trunks, umbrellas, walking sticks.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 9: Spectacles [optics]; sunglasses; spectacle cases; cases for sunglasses; parts and accessories for all the aforesaid goods, included in this class.

Class 14: Jewels; ornaments [jewellery, jewelry (am.)]; paste jewellery [costume jewelry (am.)]; cuff links; tie pins and tie clips; necklaces [jewellery]; earrings; rings [jewellery, jewelry (am.)]; bracelets; bracelets; brooches [jewellery]; precious stones; semi-precious stones; clocks; time instruments; housings for clocks and watches; key rings [split rings with trinket or decorative fob]; parts and accessories for all the aforesaid goods, included in this class.

Class 18: Luggage, bags, wallets and other carriers; articles of leather and of imitations of leather not included in other classes; travel luggage; traveling trunks; travelling bags and sets; garment bags for travel; trunks and travelling bags; vanity cases, not fitted; carrier bags; backpacks; handbags; beach bags; shopping bags; cross-body bags; attaché cases; documents wallets; attaché cases; sport bags; satchels; wristlet bags; small leather goods; wallets; purses; bags for men; key cases; card wallets [leatherware]; umbrellas; parasols; parts and accessories for all the aforesaid goods, included in this class.

Class 25: Clothing; outerclothing; underwear; denim clothing, in particular denim trousers, denim dungarees, denim skirts, denim dresses, denim shirts, denim blouses, denim jackets; sweat shirts; shirts; polo shirts; tee-shirts; blouses; corsets; corsets; suits; waistcoats; mackintoshes; coats; trousers; sweaters; gowns; skirts; skirts for women; jackets; jackets [clothing]; neck scarves [mufflers]; stoles; scarves; shawls; silk scarves; articles of knitwear; neckties; pocket handkerchiefs (clothing); underwear; suspenders; gloves [clothing]; waist belts; stockings; tights; socks; footwear; headgear; parts and accessories for all the aforesaid goods, included in this class.

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 applicants’ 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).

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.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 majority of the goods deemed to be identical are directed at the public at large and some of the goods, such as precious stones in Class 14, target both the public at large and business customers who have specific professional knowledge or expertise.

As regards the degree of attentiveness of the relevant public in relation to some goods, such as jewellery, precious stones and watches, which in many cases will be luxury items or will be intended as gifts, consumers generally put a certain amount of thought into the selection of these goods and a relatively high degree of attention on the part of the consumer may therefore be assumed (09/12/2010, R 900/2010‑1, Leo Marco (FIG. MARK) / LEO, § 22).

Therefore, the public’s degree of attentiveness in relation to the relevant goods may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	Malesandro
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 earlier trade mark is a figurative mark containing the verbal element ‘sandro’, depicted in standard black lower-case letters with a space between each letter. A significant part of the relevant public will perceive the verbal element ‘sandro’ as a male name or a short form of the male name Alessandro. However, it is not excluded that part of the public will perceive it as a meaningless word. The verbal element ‘sandro’ is not related to the relevant goods and its distinctiveness is average.

The contested sign is a one-word mark. In the case of word marks, the word as such that is protected and not its written form. Therefore, it is irrelevant whether the word mark is depicted in upper- or lower- or title-case letters.

The opponent argued that the contested sign is composed of the common English word ‘male’ and of the name ‘Sandro’, and that the entire contested sign will be perceived as a ‘man named Sandro’. Although under certain circumstances consumers might break down the mark into smaller parts, the general rule is that consumers perceive the mark as a whole and do not artificially dissect it. The contested sign does not contain any visual separation that could suggest splitting the mark into smaller parts. Although the contested sign contains the string of letters ‘sandro’ and the string of letters corresponding to the English word ‘male’, such coincidences are not so obvious in the present combination and they will rather go unnoticed by consumers when perceiving the word ‘Malesandro’. Therefore, contrary to the opponent’s argument, the relevant public will perceive the contested sign, ‘Malesandro’, in its entirety without attributing any particular meaning. It follows that the word ‘Malesandro’ is not related to the relevant goods and has a normal degree of distinctiveness.

Visually, the signs coincide in the string of letters ‘sandro’ and they differ in the letters ‘Male’ of the contested sign, which have no counterparts in the earlier mark. Moreover, the signs clearly differ in their length.

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 catches the attention of the reader. When encountering the contested sign, consumers will perceive the differing letters ‘Male’ first. Therefore, the fact that the differing letters appear at the beginning of the contested sign is of particular importance. Furthermore, due to the length of the contested sign, the coincidence in the string of letters ‘sandro’ is hardly noticeable.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘sandro’, present identically in both signs. The pronunciation differs in the sound of the letters ‘Male’ of the contested sign, which have no counterparts in the earlier mark. The signs also differ in their length, rhythm and intonation.

Taking into account that, when referring to the contested sign verbally, the sounds of the differing letters will be pronounced and heard first, the signs are aurally similar to an average degree.

Conceptually, for the part of the relevant public who perceive the earlier mark ‘sandro’ as a male name, the contested sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

For the part of the relevant public who do not attribute any particular meaning to the verbal element ‘sandro’, neither of the signs has a meaning. Consequently, a conceptual comparison for this part of the public is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

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.

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).

The goods are deemed to be identical. They target both the public at large and business customers who have specific professional knowledge or expertise. The degree of attentiveness of the relevant public varies from average to high.

The signs are visually similar to a low degree, aurally similar to an average degree and conceptually, depending on the part of the public, the signs are not similar or the conceptual aspect does not influence the assessment of the similarity between the signs. The distinctiveness of the earlier mark is normal.

The Court has stated that, when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods or services in question and the way they are marketed (22/09/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27).

The relevant goods are the type of goods that are usually examined visually or some of them may be tried on before being bought. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). The same principle is applicable to all the remaining goods in the present case. Consequently, applying the abovementioned principle, the average aural similarity between the signs has less weight than their low visual similarity.

As explained above in section c) of this decision, the contested sign is clearly longer than the earlier mark. Furthermore, its most relevant part (the beginning) contains four letters that are not included in the earlier mark. Moreover, the general rule is that consumers perceive the mark as a whole and do not artificially dissect it. Therefore, although the signs coincide in the string of letters ‘sandro’, due to their position within the contested sign, the overall impression created by the signs is quite different.

Taking into account the above, the commonality in the string of letters ‘sandro’ is not sufficient to find a likelihood of confusion on the part of the relevant public. For the sake of completeness, the Opposition Division concludes that a likelihood of association (the possible assumption of the consumers that the goods originate from the same undertaking or economically linked undertakings) is also excluded. It is unlikely that consumers, who perceive the earlier mark— ‘sandro’— as a male name, will perceive the contested sign, ‘Malesandro’, as a line of the opponent’s goods that bear the trade mark ‘sandro’, on account of the lack of conceptual similarity and the visual differentiation provided by the differing letters at the beginning (the most relevant part) of the contested sign. That is even more unlikely for the part of the relevant public who perceive both signs as meaningless. The signs are clearly of a different length, their beginnings are different and the coincidence in the remaining letters is hardly perceptible. Therefore, consumers with either an average or high degree of attention have no reason to assume that the marks are variants of each other designating different lines of goods.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicants in the course of these proceedings.

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

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 120 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR (former Rule 94(7)(d) EUTMIR, in force before 01/10/2017).

The Opposition Division

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.