OPPOSITION No B 3 091 062

Design e More, Rua das Casas Queimadas, nº 567 Grijó, 4415-439 Grijó - Vila Nova de Gaia, Portugal (opponent), represented by Simoes, Garcia, Corte-Real & Associados - Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative)

a g a i n s t

luxury jade Srl, Via Paolo Sarpi 50, 20154 Milano, Italy (applicant).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 062 is upheld for all the contested goods.

2. European Union trade mark application No 18 054 624 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 18 054 624 ‘LEMON BERRY ITALIAN FASHION’ (wordmark). The opposition is based on, inter alia, European Union trade mark registration No 12 928 388 ‘LEMON JELLY’ (wordmark). The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 928 388.

1. The goods

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

Class 10: Orthotic footwear.

Class 18: Leather and imitation leather; Animal skins, hides; Imitation leather; Baggage; Travelling sets [leatherware]; Hand bags; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Saddlery, whips and animal apparel.

Class 25: Footwear; Clothing; Headgear.

The contested goods are the following:

Class 18: Bags; Saddlery, whips and apparel for animals; Walking staffs; Umbrellas and parasols; Luggage, bags, wallets and other carriers.

Class 25: Clothing; Footwear; Headgear.

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 Saddlery, whips and apparel for animals; Walking staffs; Umbrellas and parasols are identically contained in the opponent’s list (including synonyms).

The contested Luggage, bags (listed two times) and other carriers include, as broader categories, or overlap with, the opponent’s Trunks and travelling bags. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested wallets are similar to the opponent’s Hand bags. These goods can be of the same nature, they will be offered through the same distribution channels and are directed at the same consumers.

Contested goods in Class 25

The contested Clothing; Footwear; Headgear are identically contained in the opponent’s list.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. The signs

LEMON JELLY	LEMON BERRY ITALIAN FASHION
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘Jelly’ and ‘Berry’ are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as Spain and Italy.

The element ‘Lemon’ of the earlier mark will be understood by the Spanish and Italian-speaking part of the public as a ‘yellow, oval citrus fruit with thick skin and fragrant, acidic juice’ (see: https://www.lexico.com/en/definition/lemon) since its equivalents are nearly identical (Limón in Spanish and Limone in Italian). This word has no meaning for the relevant goods and is, therefore, distinctive.

The word ‘Jelly’ of the earlier mark has no meaning for the Spanish and Italian-speaking part of the public and is, therefore, distinctive.

The contested sign consists of the words ‘LEMON BERRY ITALIAN FASHION’. The word “Lemon” as shown above will be understood without any meaning for the goods in question and is therefore, distinctive.

The word ‘Berry’ has no meaning for the Spanish and Italian-speaking part of the public and is, therefore, distinctive.

The words ‘Italian Fashion’ will be understood by the relevant public. ‘Italian’ refers to the country Italy and Fashion is the area of activity that involves styles of clothing and appearance (see: https://www.collinsdictionary.com/dictionary/english/fashion).

The Opposition Division is of the opinion that the meaning of the English word ‘Fashion’ will be obvious to the relevant public in the Spanish and Italian-speaking territory. It constitutes a part of basic English vocabulary that will generally be understood by the EU’s non-English-speaking public, that is taught at the very beginning of the learning process of English and is regularly used both in everyday life and in advertising. In addition, it is often used on the market, for example on products’ labels, in relation to the relevant goods.

Therefore, the expression ‘Italian Fashion’ describes the goods in question as fashion articles coming from Italy and is, consequently, non-distinctive.

Visually, the signs coincide in their first words ‘LEMON’ and in the letters ‘E*Y’ of the words ‘BERRY’ and ‘JELLY’. They differ in the remaining letters of these words and in the additional words ‘ITALIAN FASHION’ of the contested sign, which however were found to be non-distinctive.

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the initial word ‘lemon’, present identically in both signs and also in the sound of the vowels of the words ‘Jelly’ and ‘Berry’ namely ‘e-y’. The pronunciation differs in the sound of the remaining letters of these words and in the sound of the additional words ‘ITALIAN FASHION’ of the contested sign, which however were found to be non-distinctive.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs contain the concept of ‘Lemon’. The contested sign additionally includes the concept of ‘Italian Fashion’. This however was found to be non-distinctive and cannot indicate the commercial origin.

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

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods were found to be identical (with the exception of wallets which were found to be similar). In such cases where the goods are identical, the differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them.

The signs are visually similar to an average degree, and aurally and conceptually similar to at least an average degree. The similarities stem mainly from the common first wort ‘Lemon’ which enjoys an average degree of inherent distinctiveness. 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.

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).

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.

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).

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and Italian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 928 388. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 12 928 388 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, it 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

Gueorgui IVANOV

Reiner SARAPOGLU

Monika CISZEWSKA

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.