OPPOSITION Nо B 3 091 785

 

La Senza International Canada, Llc, 9720 Wilshire Boulevard, 6th Floor, 90212 Beverly Hills, United States of America (opponent), represented by Baker & Mckenzie, Calle de José Ortega y Gasset, 29, 28006 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Abraham Industries S.R.L., Via Fosse Incrociate 284, 47822 Santarcangelo Di Romagna (Rimini), Italy (applicant), represented by Gidiemme S.R.L., Via Giardini, 474 Scala M, 41124 Modena, Italy (professional representative).

 

On 28/08/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 091 785 is partially upheld, namely for the following contested goods: Class 18: All the goods applied for in this Class with the exception of umbrellas. Class 25: All the goods applied for in this Class.

 

2.	European Union trade mark application No 18 009 404 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 18 009 404 Senzacouture (word mark). The opposition is based on, inter alia, national trade mark registration (Greece) No F 140 001, LA SENZA. 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 national trade mark registration (Greece) No F 140 001.

 

a) The goods

 

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

 

Class 18: Leather and imitation leather, articles of materials not included in other headings; thick skins; travel boxes and suitcases; fireproofs; sun visors and walking sticks; lashes; luggage; horseback riding.

Class 25: Clothing including footwear and underwear; lingerie, nightwear, tights, swimwear.

Class 35: Organization of the management of commercial enterprises related to the retail sale of lingerie; clothing; nightwear. 

The contested goods are the following:

 

Class 18: Leather and imitation leather; Casual bags; Duffel bags; Handbags; Backpacks; Daypacks; School knapsacks; Trunks and travelling bags; Key cases made of leather or imitations of leather; Keyrings of leather and imitation leather; Wallets of leather or imitation; Banknote holders of leather and imitations of leather; Attache cases made of imitation leather; leather and imitation leather card cases; leather and imitation leather wash bags; Umbrellas.

Class 25: Articles of clothing for men, women and children; Skirts; Trousers; Trousers shorts; Denim jeans; Shirts; Chemisettes; Jumpers; Sweaters; Undershirts; Vest tops; combinations [clothing]; Tracksuits; Cloaks; Stuff jackets [clothing]; Coats; Blousons; Stuff jackets [clothing]; Jackets [clothing]; Cagoules; Mackintoshes; Hats; Headgear; Sashes for wear; Gloves [clothing]; Neckties; Swimming costumes; Waist belts; Shoes; Footwear; Mules; Stockings; Socks; Tights; Boots; Robes; Underwear; Sportswear; Sweat shirts; Evening wear; Slipovers [clothing]; Hosiery.

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

 

The term ‘including’, 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).

 

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.

 
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 leather and imitation leather are included in the broad category of the earlier leather and imitation leather, articles of materials not included in other headings. Therefore, they are identical.

The contested casual bags; trunks and travelling bags; duffel bags; handbags; backpacks; daypacks; school knapsacks; attache cases made of imitation leather; key cases made of leather or imitations of leather; keyrings of leather and imitation leather; wallets of leather or imitation; banknote holders of leather and imitations of leather; leather and imitation leather card cases; leather and imitation leather wash bags are at least similar to the earlier luggage because they coincide in distribution channels, in end user and in producer.

The contested umbrellas are dissimilar to all goods covered by the earlier right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested goods in class 25

The contested skirts; trousers; trousers shorts; denim jeans; shirts; chemisettes; jumpers; sweaters; undershirts; vest tops; tracksuits; cloaks; stuff jackets [clothing] (listed twice); coats; blousons; jackets [clothing]; cagoules; mackintoshes; sashes for wear; gloves [clothing]; neckties; swimming costumes; waist belts; stockings; socks; tights; robes; underwear; sportswear; sweat shirts; evening wear; slipovers [clothing]; hosiery; articles of clothing for men, women and children; combinations [clothing] are included in the broad category of the earlier clothing including footwear and underwear. Therefore, they are identical.

The contested hats; headgear; shoes; footwear; mules; boots are similar to the earlier clothing including footwear and underwear because they have the same purpose. They coincide in distribution channels, in end user and they also have the same producer.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise in the case of leather and imitation leather.

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. 

c) The signs

 

LA SENZA	Senzacouture
Earlier trade mark	Contested sign

The relevant territory is Greece.

 

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).

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57). In the present case, as the average consumer is familiar with the expression ‘haute-couture’, they will clearly recognize the element ‘COUTURE’ in the contested sign with the designing and making of clothes. As the goods in question are fashion goods directly or closely related to clothing because they are often used as complement, the element ‘COUTURE’ is non-distinctive.

The verbal element ‘LA’ in the earlier mark will be recognized as a foreign article while the element ‘SENZA’, that the signs have in common is meaningless and therefore, distinctive to normal degree.

 

Visually and aurally, the signs coincide in the distinctive verbal element ‘SENZA’ and in its corresponding sound. The signs differ in the verbal elements ‘LA’ of the earlier mark and in ‘COUTURE’ of the contested sign, and in their sounds.

 

Given that the differentiating element ‘COUTURE’ is non-distinctive, the signs are visually and aurally similar to an average degree at least.

 

Conceptually, although the public in the relevant territory will perceive the meaning of the verbal element ‘COUTURE’ in the contested sign as explained above, the other sign has no particular meaning in that territory despite the fact that ‘LA’ will be recognized as a foreign article. Since one of the signs will not be associated with any particular meaning, the signs are not conceptually similar, although this additional concept of the contested sign will have limited importance.

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.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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

 

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

Furthermore, 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).

In the present case, the goods are partly identical and similar and partly dissimilar. The signs are visually and aurally similar to an average degree at least while conceptually they are not similar. Indeed, the main differentiating element, ‘COUTURE’, is non-distinctive and will not catch as much the attention as the element ‘SENZA’ which degree of distinctiveness is normal and which constitutes the earlier mark almost in its entirety.

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 (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Indeed, in the present case, 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 type of goods that it designates.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Greek trade mark registration. 

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade 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.

 

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

The opponent has also based its opposition on the following earlier trade marks:

 

EUTM registration (EU) No 133 926, LA SENZA:

Class 18: Bags and cases, purses, wallets, cheque book covers, articles of luggage, travel bags, ski boot cases, key cases, notecases, portfolios, trunks, sport bags; receptacles and containers, all made of leather or of imitation leathers.

Class 25: Articles of clothing for women; sleepwear, lingerie; hosiery and footwear.

EUTM registration (EU) No 12 920 385,  :

Class 25: Bras, panties, lingerie.

National trade mark registration (United Kingdom) No U K00 001 516 840, LA SENZA:

Class 25: Articles of clothing for men; articles of clothing for women; hosiery and footwear; all included in Class 25.

 

These earlier rights invoked by the opponent cover goods such as ski boot cases, which are clearly different to those applied for in the contested trade mark right and found dissimilar, namely umbrellas, because, for the same reasons as those outlined in part a), their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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

 

 

Aldo BLASI

Sandra IBAÑEZ

Victoria DAFAUCE MENÉNDEZ

 

 

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.