OPPOSITION No B 3 077 567

Modanisa Elektronik Magazacilik Ve Ticaret A.S., Altunizade Mahallesi Kusbakisi Caddesi No: 27/1 Uskudar, Istanbul, Turkey (opponent), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Omer Faruk Ugur, Rozemarijnhof 36, 5044 AV Tilburg, the Netherlands (applicant).

On 21/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 567 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 016 702 for the figurative mark . The opposition is based on European Union trade mark registration No 10 948 198 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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 and services

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

Class 25: Clothing, footwear, headgear.

Class 35: Services in this class, especially the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programs; presentation of goods on communication media for retail purposes, sales promotion for others, commercial advice for consumers, administrative processing of purchase orders, direct mail advertising, organization of commercial exhibitions and trade fairs, organization of fashion shows for promotional purposes, marketing.

The contested goods and services are the following:

Class 25: Clothing; footwear; headgear.

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services.

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 25

Clothing, footwear, headgear are identically contained in both lists of goods.

Contested services in Class 35

The contested advertising and promotional services include, as broader categories, the opponent’s direct mail advertising. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

Marketing is identically contained in both lists of services.

The contested business administrative services includes, as a broader category, the opponent’s administrative processing of purchase orders. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested business analysis, research and information services; business assistance and management services are, or fall under the broader category of, business management. These services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The opponent’s marketing, which is identical to advertising services, consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

When comparing the contested business analysis, research and information services; business assistance and management services with the opponent’s marketing, the latter is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services (including marketing) is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising and marketing strategies in his or her advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they 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 a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise, for example in the business management and marketing fields.

The degree of attention varies from average (for example for the goods in Class 25) to above-average (for example for the services in Class 35), the latter due to the degree of sophistication and the cost of the business-related services, their infrequent purchase and the serious and long-term impact they may have on the purchaser’s business.

c) The signs

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 mark is a figurative mark comprising the verbal element ‘modanisa’, written in fairly standard lower-case letters. On the right-hand side, there is a device that could be perceived as an orange/red flower with its stem slightly separated, or a leaf in autumnal colours. The contested sign is a figurative mark comprising the verbal element ‘ROSANISA’, written in upper-case letters in a slightly fancy typeface. Even though the letters ‘A’ are more stylised (they are missing their horizontal line) and the second letter is replaced by a device resembling a pink rose, as consumers tend to recognise a certain letter in a string of letters or a word that has a meaning for them, it is likely that the consumers will recognise the letter ‘O’, as well as the letters ‘A’, forming the word ‘ROSANISA’.

It should be pointed out that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a (word) sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

In light of the above judgment, the Opposition Division considers that a part of the public will dissect the earlier mark into the elements ‘moda’ and ‘nisa’, and the whole public will dissect the contested sign into the elements, ‘ROSA’ and ‘NISA’. The elements ‘moda’ and ‘ROSA’ are used as such or there are similar equivalents in many languages, for example ‘moda’ (in Croatian, Italian, Polish, Portuguese, Slovenian, Spanish), ‘mόda’ (in Czech and Slovak), ‘modă’ (in Romanian), ‘mode’ (in Danish, Dutch, French, German, Swedish) and respectively ‘rosa’ (in Italian, Portuguese, Spanish), ‘rose’ (in Danish, English, French, German), ‘roos’ (in Dutch), ‘róża’ (in Polish), ‘ros’ (in Swedish). The rose device reinforces the concept of the element ‘ROSA’.

However, for another part of the public that would not perceive the meaning of the verbal element ‘moda’, as it is either not used as such or the equivalent word is rather different, for example ‘mood’ (in Estonian), ‘muoti’ (in Finnish), ‘divat’ (in Hungarian), ‘fashion’ (in English), ‘mada’ (in Lithuanian), the earlier mark will not be dissected and, as a whole, it has a normal degree of distinctiveness.

The element ‘moda’ refers to the area of activity that involves styles of clothing and appearance; a style of clothing or a way of behaving that is popular or fashionable at a particular time. The public that will understand this word may associate this element with the goods in Class 25 (as they can be fashionable) or some of the opponent’s services, such as marketing in Class 35, since ‘MODA’ would suggest the intended purpose or focus of the services provided, and, therefore, it has at most a low degree of distinctiveness for all of the goods in Class 25 and some of the services in Class 35. The element ‘MODA’ can, nevertheless, still be considered distinctive to a normal degree in relation to, for example, administrative processing of purchase orders in Class 35. The device in the form of a flower or leaf in the earlier mark is distinctive, since it has no particular meaning in relation to the goods and services concerned.

The element ‘ROSA’, reinforced by the figurative element in the form of a rose, is perceived, inter alia, as referring to ‘a flower, often with a pleasant smell, which grows on a bush with stems that have sharp points called thorns on them’ (information extracted from Collins English Dictionary on 02/10/2020 at https://www.collinsdictionary.com/dictionary/english/rose). This element in the contested sign is distinctive, as is the device, as neither has any particular relation to the goods and services at issue. The figurative element depicting a rose will not go unnoticed as it replaces the letter ‘O’, forming part of the verbal element, and will therefore attract as much attention as the verbal element.

However, in the earlier mark, as the device does not form part of the verbal element and appears in a separate position, the Opposition Division points out that 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; 19/12/2011, R 233/2011‑4 BEST TONE (FIG.) / BETSTONE, § 24; 13/12/2011, R 53/2010‑5, JUMBO (FIG.) / DEVICE OF AN ELEPHANT (FIG.), § 59). This is applicable to the case at issue as regards the figurative element in the form of a flower or a leaf in the earlier mark.

Both the earlier mark and the contested sign have no element that could be considered clearly more dominant than others.

Visually and aurally, the signs coincide in the (sound of the) string of letters ‘*(O)*ANISA’. They differ in the (sound of the) first and third letters, ‘m’ and ‘d’ of the earlier mark v ‘R’ and ‘S’ of the contested sign, which are entirely different in visual and aural aspects. They also visually differ in their typefaces, which is fairly standard in the earlier mark and more fanciful in the contested sign, and in the depiction of a flower or a leaf (earlier mark). In the earlier mark, this flower or leaf is placed on the right-hand side of the verbal element and, in the contested sign, the rose is placed to represent the letter ‘O’. The depiction and colours of these figurative elements are entirely different, since, although the figurative element of the earlier mark could also be associated with a flower, it is clearly not a rose and, as mentioned above, could also be perceived as a leaf.

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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. This is also the case here. Even though the second and the fourth letters/sounds also coincide, due to the entirely different first and third letters/sounds (‘m’ and ‘d’ v ‘R’ and ‘S’) and the depiction of the pink rose representing the letter ‘O’, the beginnings of the marks convey an entirely different visual and aural impression.

Therefore, taking the aforementioned into account and the issue of distinctiveness, the signs are visually similar to a low degree and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The verbal element ‘moda’, included in the earlier mark, will be associated with the meaning explained above by a part of the relevant public and, for this part, it has an at most low degree of distinctiveness at least in relation to most of the goods and services concerned as explained above. The beginning of the contested sign, reinforced by the depiction of a pink rose, has an entirely different meaning. Furthermore, the remaining string of letters ‘NISA’ are perceived as meaningless. Even taking into account the distinctiveness of the element ‘moda’ of the earlier mark (low for part of the public and at least for most of the goods and services), the marks refer to entirely different concepts, ‘fashion’ and a flower in general or a leaf in autumnal colours (earlier mark) and ‘rose’ and a pink rose (contested mark).

For the part of the public for which the verbal element of the earlier mark as a whole is meaningless, it will still have the concept of a flower in general or a leaf. Consequently, the marks are conceptually not similar for both parts of the public, the one that will perceive the element ‘moda’ in the earlier mark and the public that will perceive ‘modanisa’ as a meaningless term.

As the signs have been found similar to a low degree 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 a reputation and enjoys a high degree of distinctiveness as a result of its long standing and intensive use in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent, on 18/11/2019, submitted evidence to support this claim. As the opponent requested that certain commercial data contained in exhibit 5 be kept confidential vis-à-vis third parties, the Opposition Division will describe this particular evidence only in the most general terms. The evidence consists of the following documents:

Exhibit 1: a book, apparently from the opponent itself, as no specific source is mentioned, entitled CONTEMPORARY MUSLIM, showing pictures of women wearing contemporary Muslim fashion, and giving a description of the history of Muslim fashion. It states ‘[y]et the industry is still in its infancy, according to Kerim Ture, CEO of Modanisa, the Istanbul-based e-commerce site offering modest affordable luxury’. On some pages, the mark ‘modanisa’ (est. 2011, Turkey) is mentioned. On the back cover of the book, there is a label showing its price in US dollars, Canadian dollars and pounds sterling.

Exhibit 2: an internal report, apparently from the opponent itself, as no specific source is mentioned, entitled Modanisa Dubai Modest Fashion Week Report, dated 2017, showing the trade mark with the flower device on top of the letter ‘i’, on several pages. The content is summarised in four items: overview, event summary, Turkey media outcomes and global media outcomes. The report gives information about the ‘Dubai Modest Fashion Week’ stating the following: ‘Modanisa striking brandings were mounted on the runway background and a special backdrop are to create buzz and visibility among the public through the event’, ‘Celebrity designer Rasid Bagzibagli presented its first modest collection exclusively Modanisa – by Modanisa lead model Halima Aden’, ‘the event featured 40 catwalks by designers from 20 different countries’, ‘After successful collaborations in Istanbul and London with Modest Fashion Week, Modanisa.com has been launched its heartbeat of modest fashion as a name sponsor for Dubai at 8th and 9th of December. Modanisa showcased the best designers in terms of Modest Fashion worldwide, and presented its vision of bringing the lovers of modest fashion together under one roof from all over the world’. Apparently, the trade mark ‘modanisa’ is used for a collection of ‘Muslima Wear’. The report mentions that the estimated of people reached was 6.1 million, there were 1 270 social shares, 48 YouTube views, etc. The report is in English, with the articles in the magazines and the information about the designers in Turkish. There were some press releases in Vogue Arabia, Emirates Woman, ArabNews.com, europapress.es, presseportal.de, T-VINE, My Salaam/Reuters, FIMELA.COM. The report mentions the following: ‘Turkey&Global Total Overview. A total of 134 pieces of coverage highlighting ‘Modanisa Dubai Fashion Week’ announcement have been collected in the 15 days following the DMFW. Modanisa spokespersons, designers, models, and influencers have conducted 22 interviews with media including business fashion, lifestyle media, and broadcasting resulting in broad exposure from Vogue Arabia, Anadolu Agency, Reuters, Arab News, Rotana TV, Emirates Woman, Reuters/My Salaam, CNN News, Yahoo, etc. The event was engaged by many televisions domestically and internationally including Al Ann TV, Al Arabiyah, Dubai TV, Deutsche Welle, MBC TV, Rotana TV, and a Lebanese TV channel, Turkey Star TV.

Exhibit 3: an internal media coverage book, apparently from the opponent itself, as no specific source is mentioned, about the ‘Dubai Modest Fashion Week’, sponsored by ‘modanisa’ with the following on the cover page: , showing pictures of women wearing contemporary Muslim fashion. The report also mentions some (cover pages of) press articles in Arab News, The National, JAMALOUKI.net, LEISURE, City TIMES, europapress, MOJEH, EWMODA, Emirates WOMAN, my salaam, VOGUE, Expat Echo Dubai, gettyimages, MUSLIMGIRLJOURNAL, BAHRAIN NEWS GAZETTE, LIFE, SK WORLD NEWS, IRAQ NEWS Gazette, Surror Asia, etc. There are also pictures of women wearing contemporary Muslim fashion with a description in Arabic, Chinese or English, and the price of the articles in riyal Saudi (currency of Saudi Arabia (SAR).

Exhibit 4: an internal report, apparently from the opponent itself, as no specific source is mentioned, entitled Sponsorship Proposal, London Modest Fashion Week, April 15-16, 2017, Olympia, which took place in London, United Kingdom (UK), which, according to the opponent, shows that the fashion week has reached 90 million media & reach, 100 designers and brands all around the world, 5000 event visitors and fashion lovers, and 30 countries in Europe, Asia, the United Arab Emirates (UAE), Africa and America. The earlier mark is depicted on the cover page as . The document also mentions that the first international modest fashion event took place in Turkey in 2016. The fashion week events were mentioned in several newspapers, such as The New York Times, Vanity Fair, Daily Mail, Kuwait Times, The China Post, the Guardian, CNN, USA Today, Elle, China Daily, The Washington Post, Vogue, Arab Times, The Cleaner. Furthermore, there are some pictures of influencers with the number of their followers.

Exhibit 5: a large number of invoices issued by ‘modanisa’ and addressed to clients in Austria, Belgium, France, Germany, Italy, the Netherlands, Spain and the UK. Around 75 % of the invoices are dated in the relevant period: before the filing date of the contested sign, and the rest are dated after the relevant date (29/01/2019). The trade mark ‘modanisa.com’ figurative mark) appears at the top of the invoices. The quantities mentioned in the invoices show a substantial number of sales, the number of which, for confidentiality reasons, cannot be revealed. In the description the kind of products (clothing articles) is listed, followed by, inter alia, ‘Y-London’, ‘POLO Rucci’, ‘Bigotil Milano’, ‘Jessica Carlyle’, ‘Beverly Hills Polo Club’, ‘JAQAR’, ‘Eldia by Fatima’, ‘Zahrace’, ‘Lai By Hilal’, ‘Cool Vera’, ‘Mirach’, ‘Pierre Cardin’, ‘Myzen’, ‘MISS ZERA’, ‘Refka’, ‘Almera’, ‘Tommy Life’ the latter being the trade mark of the clothing articles.

Exhibit 6: copies of registration certificates of the mark ‘modanisa’ in Egypt, India, Iran, Jordan, Morocco, Turkey and the United States (US).

Exhibit 7: a press article in the UK newspaper Mail Online, published on 15/04/2017, where the article states that ‘A revolutionary fashion show aimed at empowering Muslim women returned to London this year … More than 25 designers from around the world showcased their lines during Modest Fashion Week … The event, which is being hosted by organisers MODANISA, aims to give a platform to brands that cater for religious women and those who prefer to dress modestly’.

Exhibit 8: a press article in the UK newspaper Mail Online, published on 18/02/2018, which shows that the ‘Modest Fashion Week’ in London was sponsored by ‘modanisa’ (its name appearing on the background of the catwalk).

Exhibit 9: a press article in the UK magazine Melan Magazine, published on 25/04/2017, entitled Modanisa London Modest Fashion Week 2017. On the background of the catwalk, the trade mark ‘modanisa’ appears, together with several pictures of women on the catwalk.

Exhibit 10: a press article in T-Vine Magazine, which is, according to the opponent, the UK’s first English-language consumer publication (print/online) for British Turks and those interested in the Turkish culture. The article was published on 10/07/2018 and gives information about the Spring-Summer trends from ‘Modanisa’s London Modest Fashion Week’.

Exhibit 11: a press article about the ‘Modanisa Fashion Week 2017’, which gives information about its participants, brands and special guests of the show.

Exhibit 12: a press article entitled Industry Pioneers Modanisa Dazzle With Their First London Modest Fashion Week, which appeared in the PR Newswire, published on 17/04/2017 giving information about the ‘Modanisa Fashion Week 2017’ that, inter alia, 26 designers attended from around the world showcasing their new lines at the ‘Mondanisa London Modest Fashion Week’ and stated: ‘Sponsors Modanisa – the world’s biggest online modest fashion retailer – brought the glitz and glamour of its concept to the British capital after hosting the hugely successful first-ever ‘Modest Fashion Week’ in Istanbul last year’.

Exhibit 13: a press article, which appeared in the Bestofclip.net Magazine, published on 16/04/2017 about the ‘London Modest Fashion Week’ sponsored by ‘modanisa’. The article states, inter alia: ‘London Modest Fashion Week, held in London under the sponsorship of Modanisa, is home to some of the world’s most famous designers and bloggers. The designs dazzled at the LMFW, which held the pulse of the 2017 fashion’.

Exhibit 14: a press article in Mailonline, published on 13/05/2016, stating that 70 designers were taking part in the two-day event hosted by ‘modanisa’, an online retailer of Muslim fashion.

Exhibit 15: a press article issued on Aljazeera in English, dated 26/11/2017, giving information that, inter alia, the website ‘Ture’, established to sell ‘MODANISA’ products, attracts 100 million visitors annually and has customers in 120 countries. It also claims that ‘modanisa’ has 300 suppliers, 30 designers and has become a platform for hundreds of suppliers from all over the world. The article mentions that ‘modanisa’ was established in 2011 to offer Muslim women who chose to adopt ‘modest’ Islamic dress codes more options.

Exhibit 16: an excerpt from an article from Arab Newspaper, dated 29/12/2017, about the ‘Dubai’s first Modest Fashion Week’, led by, according to the opponent, leaders in the modest fashion world, such as ‘modanisa’.

Exhibit 17: an article about ‘Modanisa Modest Fashion Week’ taking place in Istanbul, London and Dubai, sponsored by ‘modanisa’.

Exhibit 18: an article on Aljazeera, published on 30/01/2016, entitled Inside the booming Muslim fashion industry, Muslim fashion designers reflect on a rapidly growing industry, showing that ‘modanisa’ is a Turkey-based e-commerce platform that is one of the largest players in today’s market. The article confirms that ‘modanisa’ sells Islamic clothing in about 60 countries.

Exhibit 19: an extract from the opponent’s website. The extract confirms that each month they reach 16 million customers from all over the world, and that they have customers in 130 countries. ‘modanisa’ is the first Turkish international shopping site platform and e-export.

Exhibit 20: an extract from ‘modanisa.com’ on Instagram, showing it has 51 200 followers.

Exhibit 21: an extract from ‘MODANISA DUBAI MODEST FASHION WEEK’ Instagram website showing it has 58 800 followers.

Exhibit 22: an extract from Londra Gazete, published on 22/06/2017, entitled London Modest Fashion Show takes London by storm, showing that ‘modanisa’ is the sponsor of ‘London Modest Fashion Week’.

Exhibit 23: an article in Daily Sabah in English, published on 21/04/2016, about the ‘Istanbul Modest Fashion Week’, organised by ‘modanisa’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark had acquired a high degree of distinctiveness (or reputation) through their use in the European Union.

Despite showing use of the trade mark , there is no direct information about the degree of recognition of the mark by the relevant public and its general position in the market when compared to other companies in the same sector. The opponent has not provided any material with an indication of figures, in the form of, for example, official annual reports including turnover or revenue figures for sales in the European Union, for the trade mark ‘modanisa’, nor is there sufficient objective information (coming from sources other than the opponent itself) concerning the volume of sales, the market share of the trade mark, the extent to which the mark has been promoted and if it is known by a significant part of the consumers in the European Union (EU).

The opponent has provided a large amount of invoices (exhibit 5) from which it can be deduced that the opponent is a retailer of all kinds of clothing articles that are sold in some Member States of the EU, and it is also an organiser or sponsor of fashion shows, mainly in relation to clothing for Muslims, as can be deduced from, for example, the press articles and exhibits 2-4. Furthermore, the opponent has submitted a book that is on sale (exhibit 1), but there is no information about the distribution or sale of this book in, for example, the UK, since its price is also indicated in US and Canadian dollars. Besides this, exhibit 2, which is an internal report from a fashion show in Dubai, and exhibit 3, which is an internal media coverage report of the fashion show in Dubai, mainly give information about the Fashion Weeks that took place in Dubai and Turkey, which are not Member States of the EU. The impact of these events in Dubai and Turkey on European consumers is not clear, as they were mainly covered by media outside the EU. Moreover, exhibit 4 is an internal document about a proposal for sponsorship of the first fashion show event to be organised in Europe (London). The majority of the press releases about those shows were published in newspapers that are not located in the EU, as can be seen in exhibits 2, 3, 4, 15, 16, 18 and 23, and usually target and are read by the local public.

Even though there are some press releases in European newspapers (exhibits 7, 8, 9, 10, 12, 13 and 22), most of them merely mention that ‘modanisa’ is the host and/or organiser of those fashion shows; they do not give any more specific indications on the success or recognition of the mark by the relevant public. Furthermore, as already indicated above, some of these documents apparently originate from the opponent itself, as no specific external source is mentioned. Furthermore, these documents do not give sufficient information on the relevance of, for example, the fashion show (London) on the European market, and on how intensively the mark was promoted at that event. The extracts with the number of followers on social media (exhibits 20 and 21) does not give sufficient information, for example, about the territorial origin of these followers. The same is applicable as regards exhibits 15 and 19, as although the information states that the products are sold in 120 countries, reaching 100 million visitors annually (exhibit 15) and that there are 16 million customers in 130 countries (exhibit 19), there is no information specifying customers in the EU.

Furthermore, as indicated above, the evidence does not show the degree of recognition of the trade mark among the relevant public in the form of, for example, surveys; nor does it show that the trade mark is known by a significant part of the relevant public. The evidence merely shows that the mark ‘modanisa’ has been used in the market or that there is a company, named ‘modanisa’ in the market providing some services, such as retailing of clothing articles and the organisation of fashion shows (only one of which was in London). Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that its trade mark has a higher degree of distinctiveness through its use.

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, despite the presence of a weak element in the mark for most of the goods and services concerned (at least for a part of the public), as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services at issue are identical or similar to a low degree and they target the public at large and a more professional public, who have a level of attention that varies from average to above-average.

The marks are visually similar to a low degree and aurally similar to an average degree and conceptually not similar.

Although the signs coincide in some letters and sounds, comparing the marks in overall terms, the Opposition Division finds that there are sufficient differences in the additional elements and sounds, particularly the entirely different beginnings, which have an important impact on the overall impression of the signs, even though the element ‘moda’ has a low degree of distinctiveness for part of the public, at least in relation to most of the goods and services concerned. There are striking differences in the beginnings of the signs and in their figurative elements that outweigh the similarities between the endings. It is also important to mention that even if the device in the earlier mark is perceived as a flower, it will not be perceived as a rose, while the device in the contested sign is clearly a pink rose.

The Opposition Division is of the opinion that the differences are sufficient to safely exclude a likelihood of confusion including a likelihood of association. It can reasonably be concluded that consumers will clearly be able to distinguish the marks in dispute and will perceive them as coming from different undertakings.

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). Therefore, the considerable visual differences between the signs caused by the additional verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them. The goods in Class 25 will be purchased only after visually perceiving the signs, this will also apply to the services in Class 35, as these will also be ordered after visually perceiving the signs; these services are directed at professionals, usually infrequently purchased and normally quite expensive and the degree of attention for this part of the public will be above-average. Consequently, both the significant visual differences between the signs, as well as their conceptual differences, will not go unnoticed when perceiving the signs in dispute in relation to all the goods and services at issue. As a result, despite the average degree of aural similarity between the signs, this cannot offset the low degree of visual similarity between them and their conceptual differences.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on Article 8(1)(b) EUTMR.

The Opposition Division will now continue to examine the opposition based on the ground of Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the ground of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation for the reasons already set out above in section d) of this decision.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must also be rejected as far as based on this ground.

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 applicant 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 applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Helen Louise MOSBACK

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.