OPPOSITION Nо B 3 107 591

 

Van De Velde Nv, Lageweg 4, 9260 Schellebelle, Belgium (opponent), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative) 

 

a g a i n s t

 

Diamod Ltd., 20 Akad. Boris Stefanov Blvd., Entrance B, Apt. 6, 1700 Sofia, Bulgaria (applicant), represented by Ivaylo Ganchev, 36 Yanko Sakuzov blvd., 1st floor, app. 1, 1504 Sofia, Bulgaria (professional representative).

On 19/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 107 591 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 18 118 313 (figurative mark). The opposition is based on inter alia, European Union trade mark registration No 18 057 014 (figurative mark). 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 18 057 014.

 

a) The goods

 

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

 

Class 25: Lingerie; slips (undergarments); girls underwear; corsets; brassieres; maillots; bikinis; swimming trunks; beach wraps; swimwear for men, women and children.

The contested goods are the following:

Class 25: Swimming caps; swimming costumes; swimming suits; swimming trunks; bath robes; bathing costumes for women; bathing suit cover-ups; bathing suits; bathing suits for men; bathing trunks; beach clothes; beach robes; beach wraps; bath sandals; bath slippers; beach shoes; flip-flops; sandals and beach shoes; bathing caps; beach hats; sun hats; clothing; footwear; headgear; swim wear for children.

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.

The contested swim wear for children are identically contained in both lists of goods.

The contested swimming caps; swimming costumes; swimming suits; swimming trunks; bathing costumes for women; bathing suit cover-ups; bathing suits; bathing suits for men; bathing trunks; bathing caps are included in the broad category of the opponent’s swimwear for men, women and children. Therefore, they are identical.

The contested clothing includes, as broad category, the opponent’s swimwear for men, women and children. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered to be identical.

The contested beach clothes; beach robes; beach wraps; bath sandals; bath slippers; beach shoes; flip-flops; sandals and beach shoes; beach hats; sun hats; footwear; headgear are similar to the opponent’s swim wear for men, women and children. They all coincide in their purpose, namely, to cover parts of the human body (albeit, different parts) and protect them against the elements. They are also fashion articles which are often found in the same retail outlets and target the same public.

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 and similar are directed at the public at large. The degree of attention is considered to be average.

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).

  

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark consists of the words ‘PRIMA DONNA’ in black upper-case letters, where the word ‘DONNA’ is placed below the word ‘PRIMA’. The word combination in the mark forms a complete semantic unit, which will be understood throughout the European Union as ‘leading female singer in an opera’, ‘a person who has the highest standing or takes a leading role in a particular field’ or as ‘somebody who is self-important or temperamental’. The word combination ‘PRIMA DONNA’ has an equivalent in all languages of the European Union, although the form of writing might be slightly different in some languages, for example ‘prima-dona’ in Portuguese and ‘primadonă’ in Romanian. The word combination has no meaning for the goods in question and is therefore distinctive to an average degree.

The contested mark consists of the word ‘PARAMIDONNA’ in black upper-case letters, and the words ‘EXCEPTIONAL FASHION EXPERIENCE’ below the first phrase, in slightly smaller black upper-case letters. Furthermore, there is a line below the letter ‘M’ in the word ‘PARAMIDONNA’. The first word part of the mark ‘PARAMIDONNA’ does not have any meaning as a whole. However, the word element ‘PARA’ has several meanings in the EU languages, for example, in Spanish, it has a meaning as ‘for’. Furthermore, the word ‘mi’ has a meaning in Spanish as ‘my’. The word element ‘DONNA’ has a meaning in part of the EU, for example in Italy, as indicating ‘an adult female person’ and in Romanian, as indicating ‘an Italian woman of rank’. The word ‘DONNA’ could therefore be perceived as a non-distinctive part of the mark for part of the relevant public, as it would indicate that the goods are intended for women. However, Donna is also a female name, so for another part of the public, such as the English-speaking part, it is distinctive to an average degree.

As a whole, the word element ‘PARAMIDONNA’ will be seen by the relevant consumers in the EU as a distinctive expression that does not have any meaning as a whole.

The expression ‘EXCEPTIONAL FASHION EXPERIENCE’ will be understood by the part of the relevant public which understands English. For this part of the relevant public, the expression will be seen as non-distinctive for the goods in question, as it is laudatory slogan. For the part of the relevant public that does not understand English it will be seen as distinctive. However, the element ‘PARAMIDONNA’ in the contested sign is the dominant element as it is the most visually eye-catching.

 

Visually and aurally, the signs coincide in the letters and sounds of one of their word elements, ‘DONNA’. Furthermore, both signs start with the letter ‘P’ and they include the same letters in their first parts, although they are not in the same order, that is, ‘PARAMI’ in the contested mark and ‘PRIMA’ in the earlier mark. The marks differ in the other letters of the marks, namely, the additional expression ‘EXCEPTIONAL FASHION EXPERIENCE’, although it is visually secondary and non-distinctive for a part of the public. Furthermore, they differ in their figurative elements, i.e. the underlining of the letter ‘M’ of the contested mark. Therefore, the signs are considered aurally and visually similar to a below average degree. 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the earlier mark. The words ‘PRIMA DONNA’ form a complete semantic unit which has a meaning for the relevant public in the European Union, as explained above. This word combination will therefore be understood as a whole, and the consumers will not dissect ‘prima’ from ‘donna’.

Regarding the contested mark, although the sign as a whole does not have any meaning for the public in the relevant territory, the coinciding word element ‘DONNA’ does have a meaning in the relevant territory. However, as explained above, the word element does not have the same meaning in both marks, as the earlier mark forms a complete semantic unit which has a clear meaning, which is not the case for the contested mark. For this reason the marks’ overlapping element has no conceptual impact.

Therefore, the signs are not similar conceptually.

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).

The goods are identical and similar, and they target the public at large whose level of attention is considered to be average. The marks have been found visually and aurally similar to a below average degree. Conceptually, the signs are not similar.

Where at least one of the signs at issue has a clear and specific meaning that can be grasped immediately, the resulting conceptual difference may offset the visual and aural similarity between the signs (12/01/2006, C‑361/04, Picaro, EU:C:2006:25, § 20). This is the so-called principle of ‘neutralisation’. That impact of conceptual difference is taken into consideration when making the overall assessment of similarity between the signs (05/10/2017, C‑437/16 P, CHEMPIOIL / CHAMPION et al., EU:C:2017:737, § 44; 04/03/2020, C‑328/18 P, BLACK LABEL BY EQUIVALENZA (fig.) / LABELL (fig.) et al., EU:C:2020:156, § 75). This is applicable to the case at hand as the clear concept of the earlier mark makes a possible confusion between the marks unlikely.

Consequently, the Opposition Division considers that the meaning that will be attributed to the distinctive word element of the earlier mark creates a significant conceptual difference between the signs that is sufficient to counteract the visual and aural similarities and exclude a likelihood of confusion. Notwithstanding the principle of interdependence mentioned above, there is no reason to assume that the relevant public will be misled into thinking that the goods come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, even given the identity of the goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

In its arguments, the opponent refers to cases from EUIPO‘s Opposition Division and cases from other national offices, where likelihood of confusion was found in cases that the opponent claims are similar to the case at hand. It is settled case-law that the legality of the decisions of the EUIPO is to be assessed purely by reference to marks at hand and not the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198, § 35.). Accordingly, the Office is not bound by its previous decisions, since each case has to be dealt with separately and with regard to its particularities. 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. In light of the above, this argument of the opponent must be set aside.

The opponent has also based its opposition on Benelux trade mark registration No 45 705 ‘PRIMA DONNA’ (word mark) for corsets and brassieres in Class 25 and International trade mark registration designating Benelux No 564 446 ‘PRIMA DONNA’ (word mark) for clothing, in particular corsetry articles, corsets, brassieres, fronts for brassieres, bodices, stocking suspenders, underwear for women and men, knitted articles, knitted underwear and body linen made of rayon, hosiery in Class 25

The other earlier rights invoked by the opponent have a more limited territorial scope. Furthermore, they consist of the same expression as the mark compared, ‘PRIMA DONNA’. Therefore, the same conclusion applies, and the outcome cannot be different.

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

 

 

Frédérique SULPICE

Dagný Fjóla JÓHANNSDÓTTIR

Martin LENZ

 

 

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.