OPPOSITION Nо B 3 110 027

 

Invicta Spa, Via Fornacino 96, 10040 Leinì (TO), Italy (opponent), represented by Buzzi, Notaro & Antonielli d'Oulx, Corso Vittorio Emanuele II, 6, 10123 Torino, Italy (professional representative) 

 

a g a i n s t

 

Megi Spółka Z Ograniczoną Odpowiedzialnością, Brzozowa 104/118, 05-830 Walendów, Poland (applicant), represented by Dawid Bugajski, Grochowe Łąki 7a/10, 61-752 Poznań, Poland (professional representative).

On 17/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 110 027 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 141 711 is rejected in its entirety.

 

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

 

REASONS

 

On 28/01/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 141 711 (figurative mark). The opposition is based on international trade mark registration designating the European Union No 1 201 001 ‘INVICTA’ (word 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.

 

 

a) The goods

 

The goods and services on which the opposition is based are, inter alia, the following:

 

Class 25: Articles of clothing, footwear, headgear.

The contested goods are the following:

Class 25: Tracksuit bottoms; leggings [trousers]; blouses; short-sleeve shirts; short-sleeved T-shirts; track jackets; sweaters; shirts; skirts; shorts; ladies' dresses; coverups; men's and women's jackets, coats, trousers, vests; waistcoats; one-piece playsuits.

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 goods comprise a wide range of garments that are all included in the broad category of the opponent’s articles of 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 are directed at the public at large. The degree of attention is considered to be average.

 

c) The signs

 

INVICTA
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

  

As the parties argues, the contested sign’s verbal element ‘INVITE’ will be perceived as meaningful for the English-speaking consumers, conveying the meaning of ‘make a polite, formal, or friendly request to (someone) to go somewhere or to do something’ (information extracted from Lexico on 09/06/2021 at https://www.lexico.com/definition/invite). Since this meaning entails a conceptual difference that might reduce the sign’s similarities, the Opposition Division finds it appropriate to focus the comparison on the part of the public for which the element ‘INVITE’ does not convey any clear meaning and is therefore distinctive, such as for the Polish-speaking consumers.

The earlier trade mark’s element ‘INVICTA’ will be perceived as a meaningless and distinctive component by a non-negligible part of the relevant consumers as it is unlikely that the vast majority of consumers of the relevant goods in Class 25 will grasp its Latin meaning (in this regard, see Judmgent of 28 April 2014, T-473/11, ‘MENOCHRON’, para. 39). 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, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison on this non-negligible part of the Polish-speaking consumers for which the element ‘INVICTA’ is meaningless and distinctive.

Rectangular backgrounds such as those in the contested application are commonplace in trade and merely serve to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to them (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27).

In the assessment of the visual and aural similarity of the marks in question it has to be also borne in mind that 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.

Finally, the earlier mark have no elements that can be considered visually dominant.

Visually and aurally, the signs coincide in the sequence of initial letters (and their sound) ‘INVI’ and the penultimate letter ‘T’ (and its sound). However, the signs differ in the earlier mark’s fifth letter ‘C’ and in the sign’s respective final letters ‘A’ and ‘E’, and in their sounds. Finally, the signs visually differ in the contested application’s graphical elements and the slight stylization which is merely decorative.

Therefore, the signs are visually and aurally similar to an average degree.

 

Conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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

 

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case the goods have been found identical. They target the general consumers that will pay an average degree of attention.

The signs have been found visually and aurally similar to an average degree insofar the signs coincides in their initial part ‘INVI’ (where consumers generally pays more attention) and in their penultimate letter ‘T’.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical goods are likely to think that they come from the same undertaking or from economically linked undertakings.

In its observations, the applicant asserts that in the EUIPO database there are several trademarks containing the word ‘INVICTA’ in classes identical to those for which the opponent have protection. For this reason, the applicant asserts that there is no justification for refusing the registration for the much less similar contested application.

In this regards, it must be stressed that ‘Opposition’ is a procedure that takes place only when a third party requests the Office to reject a European Union trade mark application or an international registration designating the EU on the basis of the earlier rights it holds. Consequently, the fact that the opponent’s trademark was not challenged in other proceedings or the fact that the opponent did not oppose other trademarks containing the element ‘INVICTA’ has no role in the assessment of likelihood of confusion among the signs at stake.

Considering all the above, there is a likelihood of confusion on the part of the Polish-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 international trade mark registration designating No 1 201 001. It follows that the contested trade mark must be rejected for all the contested goods. 

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

 

 

Claudia ATTINÀ

Aldo BLASI

Angela DI BLASIO

 

 

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.