OPPOSITION No B 3 090 202

Successori Bernagozzi Societa' a Responsabilita' Limitata, Presso Centergross Frazione Funo - Via dei Lanaioli, 40050 Argelato (BO), Italy (opponent), represented by Ing. Claudio Baldi S.R.L., Viale Cavallotti, 13, 60035 Jesi (Ancona), Italy (professional representative)

a g a i n s t

Stelcore Management Services Limited, 160 City Road, Kemp House 160, London 2NX, United Kingdom, and Vinod Kumar Jain, Flat No 3/B/1 RHB Apartment, Sec-3 Pratap Nagar Sanganer, 302033 Jaipur, India (applicants).

On 23/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 202 is partially upheld, namely for the following contested goods:

Class 18: Umbrellas and parasols; Umbrellas for children; Umbrellas; Umbrella covers; Telescopic umbrellas; Rainproof parasols; Patio umbrellas; Parasols; Japanese oiled-paper umbrellas (janome-gasa); Japanese paper umbrellas (karakasa); Golf umbrellas; Bags for umbrellas; Beach umbrellas [beach parasols]; Combination walking sticks and umbrellas; Covers for parasols; Carry-on suitcases; Carrying cases; Fashion handbags; Handbags; Shopping bags; Shoulder bags; Small clutch purses.

Class 24: Apparel fabrics; Bedroom textile fabrics; Broad woven industrial fabrics; Canvas; Canvas for tapestry or embroidery; Cheviots [cloth]; Coated fabrics; Coated fabrics for use in the manufacture of luggage; Coated woven textile materials; Composite textile materials; Cotton base mixed fabrics; Cotton fabrics; Covered rubber yarn fabrics [for textile use]; Curtain fabric; Curtain linings; Cushion covering materials; Elastic fabrics for clothing; Elastic woven material; Fabric for manufacturing men's outerwear; Fabric for manufacturing women's outerwear; Fabric for use in the manufacture of bags; Fabric for use in the manufacture of umbrellas; Fabric for use in the manufacture of wallets; Fabrics being textile piece goods for use in embroidery; Fabrics being textile piece goods for use in manufacture; Fabrics being textile piece goods for use in patchwork; Fabrics being textile piece goods for use in tapestry; Fabrics being textile piece goods made of mixtures of fibres; Fabrics covered with motifs to be embroidered; Fabrics for the manufacture of furnishings; Fabrics made from cotton, other than for insulation; Fabrics made from natural fibres, other than for insulation; Fabrics made from polyester, other than for insulation; Fabrics [piece goods]; Felt; Felt piece goods; Furnishing fabrics; Furnishing fabrics in the piece; Heat formable non-woven textile materials; Heat resistant fabrics [other than for insulation]; Jute cloth; Jute fabric; Linen cloth; Non-woven felts; Paper yarn fabrics for textile use; Polyester textiles; Polymer coated fabrics; Rayon fabric; Silk [cloth]; Silk-cotton mixed fabrics; Silk-wool mixed fabrics; Sponge cloths for textile use; Textile fabric piece goods for use in the manufacture of clothing; Textile fabrics for making into blankets; Textile fabrics for making up into household textile articles; Textile fabrics for the manufacture of clothing; Textile fabrics for use in the manufacture of bedding; Textile fabrics for use in the manufacture of beds; Textile fabrics for use in the manufacture of curtains; Textile fabrics for use in the manufacture of pillowcases; Textile fabrics for use in the manufacture of sheets; Textile fabrics for use in the manufacture of wall coverings; Textile fabrics for use in the manufacture of towels; Textile fabrics in the piece; Textile material; Textile piece goods for making bedding covers; Textile piece goods for making curtains; Textile piece goods made of cotton; Textiles made of cotton; Textiles made of satin; Textiles; Textiles and substitutes for textiles; Textiles for furnishings; Textiles made of flannel; Textiles made of linen.

Class 25: In its entirety.

2. European Union trade mark application No 18 047 323 is rejected for all the above goods. It may proceed for the remaining goods in Classes 18 and 24.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 047 323 Sophia-Art (word mark), namely against all the goods in Classes 18, 24 and 25. The opposition is based on international trade mark registration No 1 237 642  designating the European Union (figurative mark). The opponent invoked Article 8(1) (b) EUTMR.

Preliminary remark

The applicants declared in their observations of 06/02/2020 on page 5, that ‘it shall relinquish Class 18 and Class 25 of the EU trademark that was applied for’. However, according to Articles 8 (8) and 10 (1) EUTMDR, any restrictions must be requested via a separate sheet. As the applicants did not comply with this requirement, the restriction request with respect to Classes 18 and 25 is inadmissible.

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 18: Leather and imitations of leather; bags; clutch purses; change purses; wallets; coin purses; rucksacks; all-purpose sports bags; haversacks; beach bags; carrying cases for documents; shopping bags with wheels attached; textile shopping bags; handbags; school satchels; suitcases; sports bags; tote bags; shoulder bags; bum bags; cosmetic bags (empty); trunks and travelling bags; umbrellas; parasols; walking sticks; leads for animals.

Class 25: Clothing; sweaters; cardigans; waistcoats; dresses; trousers; shorts; jerseys; raincoats; leather clothing; woolen clothing; stockings; stocking suspenders; sock suspenders; wind resistant jackets; ski pants; fur coats; evening coats; overcoats; skirts; suits; jackets; undershirts; T-shirts; clothing for gymnastics; ladies' shirts; collars; shirts; neckerchiefs; swimming costumes; tracksuits; wedding dresses; bath robes; underwear; brassieres; corsets; slips; underpants; briefs; nightshirts; housecoats; pyjamas; gloves; shawls; scarves; neckties; bow ties; belts [clothing]; braces; hats; caps; shoes; boots; ankle boots; leather shoes; galoshes; rain boots; sports footwear; sandals; slippers; soles for footwear; heels; footwear uppers.

The contested goods are the following:

Class 18: Umbrellas and parasols; Umbrellas for children; Umbrellas; Umbrella sticks; Umbrella rings; Umbrella or parasol ribs; Umbrella handles; Umbrella covers; Telescopic umbrellas; Rainproof parasols; Patio umbrellas; Parasols; Metal parts of umbrellas; Japanese oiled-paper umbrellas (janome-gasa); Japanese paper umbrellas (karakasa); Golf umbrellas; Bags for umbrellas; Beach umbrellas [beach parasols]; Combination walking sticks and umbrellas; Covers for parasols; Frames for umbrellas or parasols; Carry-on suitcases; Carrying cases; Fashion handbags; Handbags; Shopping bags; Shoulder bags; Small clutch purses.

Class 24: Apparel fabrics; Bedroom textile fabrics; Broad woven industrial fabrics; Canvas; Canvas for tapestry or embroidery; Cheviots [cloth]; Coated fabrics; Coated fabrics for use in the manufacture of luggage; Coated woven textile materials; Composite textile materials; Cotton base mixed fabrics; Cotton fabrics; Covered rubber yarn fabrics [for textile use]; Curtain fabric; Curtain linings; Cushion covering materials; Elastic fabrics for clothing; Elastic woven material; Fabric for manufacturing men's outerwear; Fabric for manufacturing women's outerwear; Fabric for use in the manufacture of bags; Fabric for use in the manufacture of umbrellas; Fabric for use in the manufacture of wallets; Fabrics being textile piece goods for use in embroidery; Fabrics being textile piece goods for use in manufacture; Fabrics being textile piece goods for use in patchwork; Fabrics being textile piece goods for use in tapestry; Fabrics being textile piece goods made of mixtures of fibres; Fabrics covered with motifs to be embroidered; Fabrics for the manufacture of furnishings; Fabrics made from cotton, other than for insulation; Fabrics made from natural fibres, other than for insulation; Fabrics made from polyester, other than for insulation; Fabrics [piece goods]; Felt; Felt piece goods; Furnishing fabrics; Furnishing fabrics in the piece; Heat formable non-woven textile materials; Heat resistant fabrics [other than for insulation]; Jute cloth; Jute fabric; Linen cloth; Non-woven felts; Paper yarn fabrics for textile use; Polyester textiles; Polymer coated fabrics; Rayon fabric; Silk [cloth]; Silk-cotton mixed fabrics; Silk-wool mixed fabrics; Sponge cloths for textile use; Textile fabric piece goods for use in the manufacture of clothing; Textile fabrics for making into blankets; Textile fabrics for making up into household textile articles; Textile fabrics for the manufacture of clothing; Textile fabrics for use in the manufacture of bedding; Textile fabrics for use in the manufacture of beds; Textile fabrics for use in the manufacture of curtains; Textile fabrics for use in the manufacture of pillowcases; Textile fabrics for use in the manufacture of sheets; Textile fabrics for use in the manufacture of wall coverings; Textile fabrics for use in the manufacture of towels; Textile fabrics in the piece; Textile material; Textile piece goods for making bedding covers; Textile piece goods for making curtains; Textile piece goods made of cotton; Textiles made of cotton; Textiles made of satin; Window furnishing fabrics; Coverings for furniture; Wall hangings; Banners of textile; Handkerchiefs of textile; Household textile articles; Household textile articles made from non-woven materials; Napkin liners of textile; Non-woven textile articles; Quilts made of terry cloth; Tapestries of textile; Textiles; Textiles and substitutes for textiles; Textiles for furnishings; Textiles for interior decorating; Textiles made of flannel; Textiles made of linen; Towels [textile] for kitchen use; Valances; Wall fabrics; Furniture coverings (unfitted); Furniture coverings of textile; Sofa covers; Tags of textile for attachment to clothing; Bed linen and blankets; Kitchen and table linens; Bed clothes and blankets; Glass cloths [towels]; Bath towels; Bath wrap towels; Beach towels; Children's towels; Cloths of non-woven textile material for washing the body [other than for medical use]; Disposable wash cloths; Duvet covers; Face cloths of towelling; Face towels; Face towels of textile; Hand towels; Hand towels of textile; Hooded towels; Quilts of towel; Towelling [textile]; Towelling coverlets; Towels [textile] for the beach; Towels [textile] for use in connection with babies; Towels [textile] for use in connection with toddlers; Towels of textile; Towels of textile sold in pack form; Wash cloths; Baby blankets; Baby buntings; Bed blankets; Bed blankets made of cotton; Bed blankets made of man-made fibres; Bed canopies; Bed covers; Bed linen made of non-woven textile material; Bed pads; Bed throws; Bed valances; Bed warmer covers; Blankets for household pets; Blankets for outdoor use; Children's blankets; Comforters; Cotton blankets; Covers for cushions; Covers for eiderdown and duvets; Duvets; Duvets filled with goose feathers; Fabric bed valances; Flat bed sheets; Mattress covers; Picnic blankets; Pillow shams; Pillowcases; Quilt covers; Quilts filled with down; Quilts filled with feathers; Quilts filled with half down; Quilts filled with stuffing materials; Quilts filled with synthetic stuffing materials; Quilts of textile; Receiving blankets; Sheets [textile]; Sofa blankets; Textile covers for duvets; Textile goods for use as bedding; Throws; Travelling rugs [lap robes]; Valanced bed covers; Fabric table runners; Fabric table toppers; Kitchen towels; Table covers; Table covers of non-woven textile fabrics; Table napkins of textile; Tablemats of textile; Tea cloths; Textile tablecloths; Borders (textile wall hangings); Friezes [textile wall hangings]; Handcrafted textile wall hangings; Wall decorations of textile; Wall hangings of silk; Wall hangings of textile; Padded coverings [hangings of textile] for existing walls.

Class 25: Aprons [clothing]; Beach clothes; Body warmers; Cashmere clothing; Casual jackets; Casual shirts; Casual trousers; Casualwear; Coats for men; Coats for women; Cotton coats; Denims [clothing]; Embroidered clothing; Girls' clothing; Hosiery; Khakis; Ladies' clothing; Ladies' dresses; Linen clothing; Maternity clothing; Maternity leggings; Maternity shirts; Maternity shorts; Men's and women's jackets, coats, trousers, vests; Men's socks; Paper aprons; Paper clothing; Quilted jackets [clothing]; Ready-made clothing; Saris; Sailor suits; Shawls; Shawls [from tricot only]; Shawls and headscarves; Shawls and stoles; Shirts; Skirts; Skirt suits; Suits; Sweaters; Wedding dresses; Women's ceremonial dresses; Yoga pants; Yoga shirts; Yoga socks; Yoga tops; Hats; Paper hats for use as clothing items; Party hats [clothing].

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 Umbrellas and parasols; Umbrellas for children; Umbrellas; Telescopic umbrellas; Rainproof parasols; Patio umbrellas; Parasols; Japanese oiled-paper umbrellas (janome-gasa); Japanese paper umbrellas (karakasa); Golf umbrellas; Beach umbrellas [beach parasols]; are either identically contained in both lists of goods (umbrellas; parasols) or are included in the broad categories of the opponent’s umbrellas; parasols. Therefore, they are identical.

The contested Combination walking sticks and umbrellas are included in the broad category of the opponent’s walking sticks. Hence they are identical.

The contested Fashion handbags; Handbags; Shopping bags; Shoulder bags; Small clutch purses are included in the broad category of the opponent’s bags. Therefore, they are identical.

The contested Carry-on suitcases; Carrying cases are included in the broad category of the opponent’s suitcases. Therefore, they are identical.

The contested Bags for umbrellas; Umbrella covers; Covers for parasols are similar to the opponents umbrellas; parasols as they can coincide in the relevant public and their producers, and their distribution channels.

The contested Umbrella or parasol ribs; Umbrella sticks; Umbrella rings; Umbrella handles; Metal parts of umbrellas; Frames for umbrellas or parasols are dissimilar to the opponents umbrellas; parasols as there are no coinciding factors between these parts and finished goods. The end users, the distributions channels, and the purpose are different. Furthermore, these goods have also no relevant trade mark similarity criteria in common with the remaining goods in Class 18 and the other earlier goods in Class 25, as they do not coincide in their nature and purpose, their distribution channels, the sales outlets, their producers or the method of use. Furthermore, they are not in competition with each other or not complementary to each other.

Contested goods in Class 24

Large part of the contested goods in this class consist of Fabrics which are unfinished products. These goods in Class 24 on the one hand, and the earlier goods Leather and imitations of leather in Class 18 on the other hand, are all raw materials used in the fashion industry, furniture and furnishings industry, and also for do-it-yourself projects such as dressmaking, crafts etc. These goods have the same purpose and can be in competition. They target the same relevant public and can coincide in channels of distribution.

Hence, the contested Apparel fabrics; Bedroom textile fabrics; Broad woven industrial fabrics; Canvas; Canvas for tapestry or embroidery; Cheviots [cloth]; Coated fabrics; Coated fabrics for use in the manufacture of luggage; Coated woven textile materials; Composite textile materials; Cotton base mixed fabrics; Cotton fabrics; Covered rubber yarn fabrics [for textile use]; Curtain fabric; Curtain linings; Cushion covering materials; Elastic fabrics for clothing; Elastic woven material; Fabric for manufacturing men's outerwear; Fabric for manufacturing women's outerwear; Fabric for use in the manufacture of bags; Fabric for use in the manufacture of umbrellas; Fabric for use in the manufacture of wallets; Fabrics being textile piece goods for use in embroidery; Fabrics being textile piece goods for use in manufacture; Fabrics being textile piece goods for use in patchwork; Fabrics being textile piece goods for use in tapestry; Fabrics being textile piece goods made of mixtures of fibres; Fabrics covered with motifs to be embroidered; Fabrics for the manufacture of furnishings; Fabrics made from cotton, other than for insulation; Fabrics made from natural fibres, other than for insulation; Fabrics made from polyester, other than for insulation; Fabrics [piece goods]; Felt; Felt piece goods; Furnishing fabrics; Furnishing fabrics in the piece; Heat formable non-woven textile materials; Heat resistant fabrics [other than for insulation]; Jute cloth; Jute fabric; Linen cloth; Non-woven felts; Paper yarn fabrics for textile use; Polyester textiles; Polymer coated fabrics; Rayon fabric; Silk [cloth]; Silk-cotton mixed fabrics; Silk-wool mixed fabrics; Sponge cloths for textile use; Textile fabric piece goods for use in the manufacture of clothing; Textile fabrics for making into blankets; Textile fabrics for making up into household textile articles; Textile fabrics for the manufacture of clothing; Textile fabrics for use in the manufacture of bedding; Textile fabrics for use in the manufacture of beds; Textile fabrics for use in the manufacture of curtains; Textile fabrics for use in the manufacture of pillowcases; Textile fabrics for use in the manufacture of sheets; Textile fabrics for use in the manufacture of wall coverings; Textile fabrics for use in the manufacture of towels; Textile fabrics in the piece; Textile material; Textile piece goods for making bedding covers; Textile piece goods for making curtains; Textile piece goods made of cotton; Textiles made of cotton; Textiles made of satin; Textiles; Textiles and substitutes for textiles; Textiles for furnishings; Textiles made of flannel; Textiles made of linen are similar to the opponents Leather and imitations of leather goods in Class 18.

The other remaining contested goods in Class 24 are mainly textile household goods which are however finished products to be used by the public for instance in their households. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose. Hence, as these goods are not raw-materials and do not coincide with the opponents goods Leather and imitations of leather or any other goods in Class 18 they are dissimilar.

The same holds true with respect to the opponents other goods in Class 25. The main point of contact between textile goods in Class 24 and clothing in Class 25 is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, for protection and/or fashion, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, textile goods are considered dissimilar to clothing. The opponents argument that these goods are similar because they can all have a textile nature, can therefore not be upheld. The cited case-law (B 1 183 003, decision of 27/01/2009) reflects an old Office practice, which is no longer valid.

Hence the remaining contested goods in Class 24, namely Window furnishing fabrics; Textiles for interior decorating; Coverings for furniture; Wall hangings; Banners of textile; Handkerchiefs of textile; Household textile articles; Household textile articles made from non-woven materials; Napkin liners of textile; Non-woven textile articles; Quilts made of terry cloth; Tapestries of textile; Towels [textile] for kitchen use; Valances; Wall fabrics; Furniture coverings (unfitted); Furniture coverings of textile; Sofa covers; Tags of textile for attachment to clothing; Bed linen and blankets; Kitchen and table linens; Bed clothes and blankets; Glass cloths [towels]; Bath towels; Bath wrap towels; Beach towels; Children's towels; Cloths of non-woven textile material for washing the body [other than for medical use]; Disposable wash cloths; Duvet covers; Face cloths of towelling; Face towels; Face towels of textile; Hand towels; Hand towels of textile; Hooded towels; Quilts of towel; Towelling [textile]; Towelling coverlets; Towels [textile] for the beach; Towels [textile] for use in connection with babies; Towels [textile] for use in connection with toddlers; Towels of textile; Towels of textile sold in pack form; Wash cloths; Baby blankets; Baby buntings; Bed blankets; Bed blankets made of cotton; Bed blankets made of man-made fibres; Bed canopies; Bed covers; Bed linen made of non-woven textile material; Bed pads; Bed throws; Bed valances; Bed warmer covers; Blankets for household pets; Blankets for outdoor use; Children's blankets; Comforters; Cotton blankets; Covers for cushions; Covers for eiderdown and duvets; Duvets; Duvets filled with goose feathers; Fabric bed valances; Flat bed sheets; Mattress covers; Picnic blankets; Pillow shams; Pillowcases; Quilt covers; Quilts filled with down; Quilts filled with feathers; Quilts filled with half down; Quilts filled with stuffing materials; Quilts filled with synthetic stuffing materials; Quilts of textile; Receiving blankets; Sheets [textile]; Sofa blankets; Textile covers for duvets; Textile goods for use as bedding; Throws; Travelling rugs [lap robes]; Valanced bed covers; Fabric table runners; Fabric table toppers; Kitchen towels; Table covers; Table covers of non-woven textile fabrics; Table napkins of textile; Tablemats of textile; Tea cloths; Textile tablecloths; Borders (textile wall hangings); Friezes [textile wall hangings]; Handcrafted textile wall hangings; Wall decorations of textile; Wall hangings of silk; Wall hangings of textile; Padded coverings [hangings of textile] for existing walls are dissimilar to the opponents goods in Class 18 and also to all the opponents goods in Class 25, as clothing; headwear and food wear – these are the main categories of the opponents goods in Class 25 – have no relevant trade mark similarity criteria in common, as they do not coincide in their nature and purpose, their distribution channels, the sales outlets, their producers or the method of use. Furthermore, they are not in competition with each other or not complementary to each other.

Contested goods in Class 25

The contested Aprons [clothing]; Beach clothes; Body warmers; Cashmere clothing; Casual jackets; Casual shirts; Casual trousers; Casualwear; Coats for men; Coats for women; Cotton coats; Denims [clothing]; Embroidered clothing; Girls' clothing; Hosiery; Khakis; Ladies' clothing; Ladies' dresses; Linen clothing; Maternity clothing; Maternity leggings; Maternity shirts; Maternity shorts; Men's and women's jackets, coats, trousers, vests; Men's socks; Paper aprons; Paper clothing; Quilted jackets [clothing]; Ready-made clothing; Saris; Sailor suits; Shawls; Shawls [from tricot only]; Shawls and headscarves; Shawls and stoles; Shirts; Skirts; Skirt suits; Suits; Sweaters; Wedding dresses; Women's ceremonial dresses; Yoga pants; Yoga shirts; Yoga socks; Yoga tops; Hats; Paper hats for use as clothing items; Party hats [clothing] fall all under the category of clothing. As such they are included in the broad category of the opponent’s Clothing. Therefore, they are identical.

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 but also at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	Sophia-Art
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 and the contested sign a word mark.

The word element ‘SOPHIA’ in the earlier sign will be perceived by the relevant public as a female given name and the figurative element in the form of a semicircle with a letter ‘S’ inside will be perceived as an stylized letter ‘S’, as a repetition of the first letter of the word element ‘SOPHIA’.

In the contested sign, the word element ‘Sophia’ will be also perceived as a female given name. The letters ‘Art’ which follow the name ‘Sophia’ will be understood by part of the public as the English word ‘art’ and by other part of the public as a name.

The words ‘SOPHIA’ and ‘Sophia’ evoke no concept with regard to the goods in question and are therefore distinctive. The same concerns the figurative element of the earlier mark as the stylized S does not have any meaning with respect to the goods concerned. The element ‘Art’ of the contested sign will evoke the concept as referring to the products of human creativity, like for instance as in fine art, for those who understand this English term. The remaining public will understand it as a name. But even for those, who understand it as referring to fine arts, and contrary to the opinion of the opponent, this element is of normal distinctiveness in relation to the relevant goods as it has no direct descriptive or laudatory meaning.

In the earlier sign, the word element ‘SOPHIA’ is visually dominant (more eye-catching) in relation to the figurative element since the latter is represented in a less intensive shade.

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).

Visually, the signs coincide in the identical six letters ‘SOPHIA’. However, they differ in the three letters of the word element ‘Art’ at the end of the contested sign and in the figurative element of the earlier sign.

Therefore, the signs are visually similar to a more than average degree, and not dissimilar as invokes the applicant.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the identical sound of the letters ‘SOPHIA’ at the beginning of the signs. The pronunciation differs in the sound of the last letters ‘Art’ of the contested sign which, since they are represented as a single element, separated from other letters by a hyphen, will be pronounced too.

As to the figurative element of the earlier sign, it will not be pronounced by the majority of the relevant public since it will be perceived as the repetition of the initial letter of ‘SOPHIA’.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same female given name, they are conceptually 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.

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).

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).

The contested goods are partially identical, partially similar and partially dissimilar. The signs are visually similar to a more than average degree, aurally highly similar, and conceptually highly similar, too.

Due to the visual/aural/conceptual similarities and the absence of any non‑distinctive elements in the signs, a likelihood of confusion exists for the identical and similar goods.

Indeed, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, because the signs dealt with in cases B 1 183 003 and B 1 440 132 are not comparable.

Furthermore, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 International 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.

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

Peter QUAY

Karin KLÜPFEL

Tobias KLEE

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.