OPPOSITION No B 3 095 888

Calzaturificio Carmens S.p.A., Viale delle Terme, 15, 35030 Galzignano Terme (Padova), Italy (opponent), represented by Cantaluppi & Partners S.r.l., Piazzetta Cappellato Pedrocchi, 18, 35122 Padova, Italy (professional representative)

a g a i n s t

Harmén of Scandinavia AB, Ledingenas 50, 74190 Knivsta, Sweden (applicant), represented by Noréns Patentbyrå AB, Narvavägen 12, 115 22 Stockholm , Sweden (professional representative).

On 28/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 095 888 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 088 808 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 14 917 884 for the word mark ‘CARMENS’. 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 14 917 884 as is the one that covers a closer scope of protection as regards the contested one.

a) The goods

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

Class 18: Trunks and travelling bags; umbrellas and parasols; cases;  bags; braided bags; clutch bags; clutches [purses]; shoulder-bags; handbags; small bags for men; purses; attache cases; luggage; sports bags; shopping bags; haversacks; sports bags and travelling bags; vanity cases (not fitted); carrying cases; key wallets; document wallets; purses; business card cases; wallets; backpacks; bumbags; shoulder belts.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols.

Class 25: Footwear; headgear; clothing.

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

Luggage, bags, wallets; umbrellas and parasols are identically contained in the specifications of both lists.

The contested other carriers include the opponent´s document wallets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 25

The contested footwear, headgear; clothing are similar to the opponent’s bags as they share the same producer, relevant public and distribution channels.

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 that will display an average degree of attention when purchasing them.

c) The signs

CARMENS
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).

As argued by the applicant, the earlier mark ‘CARMENS’ will be associated by the relevant public as the Spanish female given name ‘CARMEN’, known internationally because of the famous opera of the same name, based on a novella with the same title by the French writer Prosper Mérimée. Since this word does not have any direct relation with the goods in question, its distinctiveness must be seen as average.

Moreover, the presence of the additional letter ‘S’ at the end of the earlier mark is not likely to materially affect either the distinctiveness or the perception of the word ‘CARMEN’, with which the majority of the relevant public is familiar.

As for the verbal element ‘HARMÉN’ included in the contested sign, it will perceived either as meaningless (for a vast majority of the relevant public) or as a family name by the Swedish-speaking part of the public. Either way, ‘HARMÉN’ is distinctive to an average degree.

The contested sign is represented in quite standard upper-case letters and with an accent in its final letter ‘*E*’. The degree of distinctiveness of this particular typeface will be limited as it merely embellishes the letters it accompanies.

The contested sign has no element that could be considered more dominant (visually eye-catching) than others.

Visually and aurally, irrespective of the different pronunciations in the different parts of the relevant territory, the signs coincide in the presence and the sounds of the string of letters ‘*ARMEN*’ placed in identical order in both signs. The signs differ in the presence of the initial letter ‘C’ in the earlier mark versus ‘H’ in the contested sign as well as in the last letter ‘S’ in the earlier mark. The presence of the accent on the letter ‘*É*’ in the contested sign will not go unnoticed phonetically, at least, for part of the public. All these differing elements entail substantial visual and aural differences between the signs. Specially, if we consider that the differing initial letters bear no resemblance between them.

In this case, moreover, it is to be noted that the signs differ in their beginning, where consumers generally tend to focus when they encounter a trade mark. This is because the public reads from left to right, making the part placed at the left of the sign, the one that first catches the attention of the reader.

For all the above, the signs are visually and aurally similar to a below average degree.

Conceptually, for the part of the public for which the contested sign bears no meaning, but will perceive the earlier mark as explained above, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the part of the public for which both ‘HARMÉN’ and ‘CARMENS’ have the meanings explained above, the signs are dissimilar.

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 average.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods have been found to be partly identical and partly similar and they are directed at the public at large with an average degree of attentiveness. The earlier mark enjoys an average degree of distinctive character.

As seen in part c) of the decision, the signs present visual and aural similarities on a below average degree while conceptually, the signs are either not similar or dissimilar.

The differences between the signs are enough to outweigh the similarities between the signs arising from the sequence of letters ‘*ARMEN’ that both signs share. The Opposition Division does not find plausible to conclude that the relevant consumers , who are well informed and reasonably observant and circumspect, might believe that the goods found to be identical or similar come from the same or economic linked undertakings.

In fact, in this case, the conceptual difference is so clear that any risk of confusion between the signs can be ruled out.

Furthermore, the comparison of the signs must be carried out on the basis of the general impression they create and cannot be reduced to a matter of arithmetic / letter-number matching as the opponent maintains in its observations.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the Italian trade mark registration No 1 376 308 for the word mark ‘CARMENS’.

Since this mark is identical to the one that has been compared, taking into account the perception by the relevant public within the entire European Union, including Italy, and covers a narrower scope of goods, the outcome cannot be different. Therefore, no likelihood of confusion exists with respect to this earlier mark either.

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.

The Opposition Division

Helen Louise MOSBACK

Yaelle Davina COHEN HAZAN

Marzena MACIAK

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.