OPPOSITION No B 3 087 085

Orchestra - Prémaman, Belgium, Avenue Louise, 54, 1050 Brussels, Belgium (opponent), represented by Cabinet Brev&Sud, 55 Avenue Clément Ader, 34170 Castelnau le Lez, Hérault, France (professional representative)

a g a i n s t

Giuseppe Chicco, Via Enrico Dandolo, 9, 76123 Andria (BT), Italy (applicant), represented by Dimitri Russo S.R.L., Via G. Bozzi, 47a, 70121 Bari, Italy (professional representative).

On 25/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 085 is upheld for all the contested goods.

2. European Union trade mark application No 18 037 317 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 037 317 for the word mark ‘PREMAMY’. The opposition is based on Benelux trade mark registration No 066 887 and international trade mark registration designating the European Union No 826 792, both for ‘PREMAMAN’ (word mark) and French trade mark registration No 4 510 920 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR for the first two earlier marks and only Article 8(1)(b) EUTMR for the third.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all the earlier rights, namely Benelux trade mark registration No 066 887 ‘PREMAMAN’ (word mark), international trade mark registration designating the European Union No 826 792 (word mark) and French trade mark registration No 4 510 920 (figurative mark).

In the present case, the date of filing of the contested trade mark is 15/03/2019.

The request was submitted in due time and it is admissible in relation to two of the three earlier trade marks, namely Benelux trade mark registration No 066 887 and international trade mark registration designating the European Union No 826 792 both for ‘PREMAMAN’ (word mark) registered more than five years prior to the relevant date mentioned above.

French trade mark registration No 4 510 920 was registered on 10/05/2019. Therefore, the request for proof of use is inadmissible because it concerns a mark that, at the date of filing of the contested trade mark, had not been registered for at least five years.

Following this, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 4 510 920, which is not subject to the proof of use requirement for the reasons already set out.

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 opposition is based on, inter alia, the following goods:

Class 20: Closets; benches (furniture); metal security barriers for babies, (furniture); barriers for babies; cribs; cradles (furniture); plastic or wooden boxes; frames (framing) made out of non-precious metal; cardboard picture frames; mirror frames; leather frames for pictures or paintings; picture frames; bottle cases; chairs (seats); highchairs for children; trunks (furniture); trunks for toys; dressers; chair pads; lounge chairs for children; chairs, foldable chairs, rocking chairs; chairs on castors; cushions; cushions for cervical comfort for babies; cushion for back comfort for non-medical purposes, pregnancy cushions ; floor cushions ; tiebacks in non-textile materials, armchair; tilting armchairs; non-metal bottle caps; non-metal and nonpaper recipient lids; bedding except bed linen; wooden beds; foldable beds; beds for infants; evolving beds for children; bed barriers; traveling beds; mattresses: furniture; furniture for storage; wooden furniture or wood substitute; storage shelves; storage boxes; bassinets, stool for children; mirrors; mobiles (decorative objects); decorative mobiles with sound; pillows; breastfeeding pillows; bathtub pillows; playpen for babies; foldable playpens for babies; curtain peg; wardrobes; wooden or plastic wall plates: towel rails (furniture), bath towels rails, coat rack (furniture); footstools; mattress covers; plastic packaging containers; portable bathtub seats for babies; shower seats; tables; toilet tables (furniture); changing table; mural changing tables; bedside tables; non-metal protection for table corners; non-metal door stops; storage shelves; changing mats for babies; floormats (cushions or mattress); floormats for children lying down; mats for playpens; cot bumpers for children beds; drawers; lounging chairs for babies (seats); lounging chairs for bolsters for children beds; baby walkers; fans; booster seats; plastic packaging containers; baby bottle cases; non metal baskets; clothes hangers; cupboards and closets; wicker baskets.

Class 21: Bin for babywear not made of precious metal, bins for domestic use not made of precious metal ; toilet cases; soap dispensers; soap holders; table napkin holders; sponge holders; vases (not made of precious metal), non electrical utensils and recipients for cleaning or cooking (not made of precious metal or plated) ; combs and sponges; brushes (except paintbrushes); toilet brushes; glasses (recipients); cups; drinking glasses; tableware of glass, porcelain and earthenware; non electrical baby-bottle heaters; non-electrical kettle; soap boxes, toothbrushes, bottles not made of precious metal, perfume sprays; pots; bowls [basins]; plates not made of precious metal; egg cups not made of precious metal; portable bathtubs for babies; cotton wool holders; heat-insulated containers; glass bulbs [receptacles]; tubs, drinking recipients, cooling bottles, isolating bottles; kettledrums not of precious metal; drinking bottles; butlers’ trays; non-electric autoclaves, for cooking; dish covers; pot lids; brushes for cleaning tanks and containers; feeding bottle racks; isotherm bags; napkin rings not made of precious metal; hygiene pots (chamber pots); dishes for babies and children; vanity cases; fruit presses, nonelectric, for household purposes; heat-insulated containers; heat-insulated containers for beverages; beverage containers; isotherm bags; coin banks (piggy banks); cosmetic utensils; toiletries; napkin rings not made of precious metal; diaper bin.

Class 24: Bibs, not of paper, for baby regurgitation; bath linen, except clothing; bed linen; table linen; fabrics for textile use; crib canopies; bed canopies; bed linen set for cribs; bed linen set for prams; quilts of textile; bed blankets; baby blankets; children’s blankets; bed covers; curtain holders of textile material; mattress covers; pillow shams; quilt covers; covers for cushions; handkerchiefs made of textile; mosquito nets; mattress ticking; textile or plastic wall coverings, small curtains made of textile, curtains of textile or plastic; bath towels; face towels for children; turkish towel; pillowcases; baby changing mats, not of paper; cotton fabrics.

Class 25: Articles of maternity underwear; nighttime maternity clothes; maternity wear; pregnancy bands (clothing); clothing articles; shoes and headgear items for infants, babies and children; bands (clothing); bandanas [neckerchiefs]; headbands [clothing]; rompers; baby bottoms; cloth bibs for children; bibs not of cloth or paper; plastic bibs for babies; bibs not made of paper or cloth; baby suits; hats with bows for babies; mufflers; caps ; baby booties; socks; onesies [clothing]; racing suit for babies; children underwear; costumes for children; gloves [clothing]; swaddling (clothes); layettes [clothing]; maternity lingerie; bath wraps; bath capes; aprons [clothing]; pouches [clothing]; diaper protection made of textile for young children; pixie suits.

The contested goods are the following:

Class 24: Textile goods, and substitutes for textile goods; filters made of textile materials; textiles.

Class 25: Clothing; footwear; headgear.

Class 26: Accessories for apparel, sewing articles and decorative textile articles; needles and pins for entomology; charms [not jewellery or for keys, rings or chains]; artificial fruit, flowers and vegetables; hair ornaments, hair rollers, hair fastening articles, and false hair.

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 24

The broad categories of the contested textile goods, and substitutes for textile goods include the opponent’s textile or plastic wall coverings, respectively. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested textiles include, as a broader category, the opponent’s fabrics for textile use. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested filters made of textile materials and the opponent’s fabrics for textile use are similar since they can be used in the manufacture of the same goods and thus have the same relevant public and distribution channels. Furthermore, they can be produced by the same undertakings active in the textile industry.

Contested goods in class 25

Clothing is identically contained in both lists of goods (including synonyms).

The contested footwear; headgear include, as broader categories, the opponent’s shoes and headgear items for infants, babies and children, respectively. Since the Office cannot dissect ex officio the broad categories of the contested goods, these goods are identical.

Contested goods in Class 26

The broad category of the contested accessories for apparel, sewing articles and decorative textile articles includes goods such as shoulder pads for clothing, the broad category of the contested artificial fruit, flowers and vegetables includes goods such as artificial blossoms for attachment to clothing, and the broad category of the contested charms [not jewellery or for keys, rings or chains] includes fabric charms for affixing to clothing. Therefore, these goods and the opponent’s fabrics for textile use in Class 24 can have the same purpose (to be used in the manufacture of clothing), target the same relevant public and share the same distribution channels. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered at least similar to a low degree to the opponent’s goods.

The contested needles and pins for entomology are used for displaying small insects or butterflies, usually in a display box. The broad category of the opponent’s plastic or wooden boxes in Class 20 includes such boxes for storing and displaying insects or butterflies. Therefore, the goods under comparison can all be concerned with entomology equipment used to store and display insect specimen collections. These goods can thus target the same relevant public, share the same distribution channels and are likely to be produced by the same undertakings. Therefore, they are at least similar to a low degree.

The contested hair ornaments, hair rollers, hair fastening articles, and false hair are articles for decorating or fixing hair whereas the broad category of the opponent’s brushes (except paintbrushes) in Class 21 includes goods such as hair brushes, which are also used in connection with the look and appearance of hair. The goods under comparison can thus target the same relevant public, be found in the same sections of retail outlets and are usually produced by the same undertakings. Therefore, they are at least 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 found to be identical or similar to varying degrees are directed at the public at large (e.g. clothing) and business customers with specific professional knowledge or expertise (e.g. textiles).

The degree of attention varies from average to higher than average, depending on the goods in question. For instance, professionals may have a higher degree of attention in relation to textiles since the type and quality of those goods is important for the making of the finished goods. However, in relation to goods such as clothing, the degree of attention will be average since they are purchased frequently and are not particularly expensive or technically sophisticated.

According to the applicant, pregnant women and mothers in general, are quite attentive to the goods they are using or purchasing for their babies’ care and, therefore, their level of attention in this case varies from average to high. However, for the reasons already explained above, the degree of attention for this part of the public in relation for example to clothing remains average.

c) The signs

	PREMAMY
Earlier trade mark	Contested sign

The relevant territory is France.

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. It is composed of the verbal element ‘premaman’, written in a grey and black standard font, and a figurative element consisting of a grey circular device with a point at the bottom left and a white circle with two small grey dots inside it.

The contested sign is the word mark ‘PREMAMY’.

The verbal elements ‘premaman’ of the earlier mark and ‘PREMAMY’ of the contested sign will be broken down by consumers, into the words ‘pre’ and ‘maman’ and ‘PRE’ and ‘MAMY’ respectively. Although the signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In particular, the coinciding word ‘pre’ will be understood as a prefix having the meaning of ‘before’ (information extracted from Larousse Dictionary on 29/01/2021 at https://www.larousse.fr/dictionnaires/francais/pr%c3%a9-/63268).

The word ‘maman’ of the earlier mark will be understood as a ‘term by which a child calls his mother’ (information extracted from Larousse Dictionary on 29/01/2021 at https://www.larousse.fr/dictionnaires/francais/maman/48988).

The word ‘MAMY’ of the contested sign, will be understood as a ‘colloquial term by which children call their grandmother’ (information extracted from Larousse Dictionary on 29/01/2021 at https://www.larousse.fr/dictionnaires/francais/mamie/48998). However, the informal word used for grandmother is usually ‘mamie’ and not ‘mamy’. Therefore, in the context of the contested sign, when considered as a whole, it cannot be excluded that a non-negligible part of the relevant consumers will therefore associate this word as informally referring to ‘mother’ (‘maman’).

Therefore, it must be considered that at least a non-negligible part of the relevant consumers will perceive both the verbal element ‘premaman’ of the earlier mark and the verbal element ‘PREMAMY’ of the contested sign as meaning ‘before mother’.

According to the applicant, the word ‘premaman’ is descriptive in relation to clothing for pregnant women since it has become a generic term to describe that category of goods. In support of this claim, the applicant submitted a dictionary definition of the word ‘premaman’ in Italian with this meaning, a copy of parts of an Italian Court case from 1984 in Italian (but with no translation of the relevant parts into English) allegedly concluding that this word had become a generic term, as well as some Google search results for ‘premaman’ in Italian.

Irrespective of whether or not ‘premaman’ is a generic term in Italian, the relevant territory in the present proceedings is France and the applicant has not adduced any evidence as to the potential customisation of this term in that territory. In fact, the category of clothing articles targeting pregnant women in France is not described or referred to as ‘premaman’ but rather ‘vêtements de grossesse’. Therefore, even if the word ‘premaman’ may be perceived by the public in the relevant territory as allusive of the target public of some of the goods concerned, such as clothing, it will still be perceived as an unusual term in relation to such goods and must therefore be considered to be distinctive in relation to the same, albeit to a below-average degree.

Furthermore, in relation to most of the goods concerned, such as textile or plastic wall coverings, plastic or wooden boxes and fabrics for textile use, ‘premaman’ (before (becoming a) mother) will not be perceived as conveying any clear or direct meaning and is, therefore, distinctive to a normal degree in relation to those goods. The same considerations apply to the verbal element ‘PREMAMY’ of the contested sign, at least insofar as the non-negligible part of the public in the relevant territory is concerned who will associate this verbal element with the same meaning.

Since a non-negligible part of the relevant public is likely to associate the verbal element in both signs with the same meaning, (i.e. as referring to ‘before (becoming a) mother’ in an informal way), and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T‑521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public in the relevant territory.

The figurative element of the earlier mark is a relatively simple and banal device essentially consisting of a basic geometric figure (circle) with a point at the bottom left and another circle inside with two dots. It will, therefore, be perceived as a weak element. Furthermore, 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). The stylisation of the verbal element is a standard typeface that will not detract the consumers’ attention away from the verbal element itself. Its distinctive character is very limited if at all.

Finally, the earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

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.

Visually, the signs coincide in the sequence of letters ‘premam*’. They differ in the last two letters ‘an’ of the earlier mark and the last letter ‘Y’ of the contested sign. Furthermore, the signs differ in the figurative element, the colours and stylisation of the earlier mark which have no counterparts in the contested sign. However, the figurative elements will have a lesser impact in the comparison of the signs for the reasons explained above.

Therefore, the signs are visually similar at least to an average degree.

Aurally, the pronunciation of the signs coincides identically in their first two syllables ‘pre-ma’ and only differ in their third syllable ‘man’ of the earlier mark as opposed to ‘MY’ of the contested sign, which nevertheless start with the sound of the same letter ‘M’ and will not alter the rhythm or intonation of the signs. Therefore, the slightly different endings of the last syllable in the respective signs will not create a substantial aural difference between them.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the part of the public under analysis. As the signs will be associated with the same informal meaning of ‘before (becoming a) mother’ albeit expressed in a slightly different way and since the additional figurative element in the earlier mark conveys no particular concept, the signs are conceptually at least highly similar.

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. Considering what has been stated above in section c) of this decision, even if the distinctiveness of the earlier mark must be seen as below-average in relation to some of the goods concerned, such as clothing, it will be perceived as normal in relation to most, such as textile or plastic wall coverings, plastic or wooden boxes and fabrics for textile use.

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).

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.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the goods are partly identical and partly similar to varying degrees. They target the public at large and business customers with a degree of attention that will vary from average to higher than average depending on the goods in question.

The distinctiveness of the earlier mark is normal in relation to most of the goods concerned but below-average in relation to some such as clothing.

However, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61).

The signs are visually similar at least to an average degree and aurally similar to a high degree. In particular, they coincide in the majority of their letters which are placed at their beginnings. This is of particular relevance since consumers generally pay more attention to the beginnings of marks than to their endings. The differences are essentially limited to elements which have less impact (the weak figurative element, the stylisation and use of colours in the earlier mark) or are of secondary impact due to their positioning within the contested sign (the last two letters in the earlier mark and the last letter in the contested sign).

Furthermore, for the part of the public under analysis, the signs are conceptually similar at least to a high degree since the respective verbal elements ‘premaman’ and ‘PREMAMY’ will be associated with the same meaning and which, moreover, is the only concept conveyed by both signs.

Even if the distinctiveness of the earlier mark is below-average in relation to some of the goods concerned as explained above in section c), it must be borne in mind that those goods are identical. Furthermore, the degree of attention displayed by consumers in relation to those goods will be average. Therefore, bearing all the above in mind and the principles of interdependence and imperfect recollection, the differences between the signs are insufficient to outweigh the considerable similarities between them so as to exclude a likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR.

Moreover, in relation to most of the goods concerned, including those which were only found to be similar to a low degree, the distinctiveness of the earlier mark is normal. Therefore, even if the relevant public will pay a higher degree of attention at least in relation to some of those goods, the differences between the signs are still not sufficient to outweigh the considerable similarities between them. Indeed, the relevant consumers are likely to believe, even in relation to the goods that are only similar to a low degree, that those goods offered under the signs in dispute originated from the same undertaking or from economically linked undertakings as the case may be on account of the significant similarities between the distinctive verbal elements ‘premaman’ and ‘PREMAMY’, which is the only element in the contested sign and the most distinctive element in the earlier mark.

Considering all the above, there is a likelihood of confusion on the part of the public under analysis in the relevant territory who will associate the verbal elements of both signs with the same meaning, (i.e. as referring to ‘before (becoming a) mother’ in an informal way). As stated above in section c) of this decision, a likelihood of confusion for only a non‑negligible part of the relevant public of the relevant territory is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 510 920. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, French trade mark registration No 4 510 920, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268) or the proof of use submitted by the opponent in relation to those earlier rights.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Sam GYLLING

Chiara BORACE

Félix ORTUÑO LÓPEZ

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.