OPPOSITION No B 3 110 510

Guy de Lummen, 21 rue Saint Guillaume, 75007 Paris, France (opponent), represented by Triptyque Law, 6 Villa Bosquet, 75007, Paris, France (professional representative)

a g a i n s t

Karl Lagerfeld B.V., Herengracht 182, 1016 BR Amsterdam, Netherlands (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative).

On 05/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 110 510 is partially upheld, namely for the following contested goods:

Class 3: Soap; perfumery; eau de cologne; toilet water; perfumes; fragrances for personal use; ethereal oils; cosmetics; make-up; lip rouge; lip glosses; mascara; eyelid shadow; eyeliner; cosmetic rouges; talcum powder, for toilet use; make up foundations; nail varnish; nail varnish removers; toiletries; cosmetic preparations for skin care; cosmetic creams; skin lotion; moisturising creams; facial masks; skin cream; cosmetic preparations for bath and shower; bath oil; bath salts; bath pearls; hair lotions; shampoos; dentifrices; antiperspirants [toiletries]; deodorants for personal use [perfumery]; shaving preparations; shaving soap; shaving gel; shaving cream; after-shave lotions; after-shave gel; shoe polish; hair dyes; cleaning preparations; cosmetics for animals.

Class 9: Goggles.

Class 18: Bags for sports; overnight bags; book bags; animal carriers [bags]; travelling bags; rucksacks; handbags; suitcases; purses; briefcases; duffel bags; textile shopping bags; beach bags; shopping bags with wheels attached; school bags; garment bags for travel; straps for luggage; overnight cases; clutch bags; kit bags; suitcases with wheels; pocket wallets; credit card holders made of leather; key cases; credit-card holders; toiletry bags; vanity cases, not fitted.

Class 25: Clothing for men, women and children; shirts; short-sleeved t-shirts; polo shirts; tops [clothing]; knit tops; sweat shirts; tank tops; sweaters; blouses; jerseys [clothing]; turtleneck shirts; shorts; tracksuit bottoms; gym suits; blazers; sport coats; sports jerseys; slacks; pants; blue jeans; skirts; dresses; wedding dresses; suits; overalls; jumper suits; waistcoats; jackets [clothing]; coverups; raincoats; capes; parkas; ponchos; bathing suits; bikinis; bathing trunks; frock coats; rainwear; cagoules; clothing for skiing; leotards; ballet suits; nightwear; pyjamas; bath robes; shower caps; chasubles; underwear; lingerie; dressing gowns; kimonos; shapewear; foundation garments; boxer shorts; leather belts [clothing]; neckties; hats; woolly hats; caps being headwear; visors; earbands; ear muffs [clothing]; scarves; shawls; cuffs; cloth bibs; footwear; gymnastic shoes; sneakers; pumps [footwear]; toe socks; stockings; hosiery; shoes; boots; beach shoes; sandals; slippers; gloves [clothing]; suspenders; layettes [clothing]; sashes for wear.

2. European Union trade mark application No 18 163 504 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 03/02/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 163 504 for the word mark ’21 RUE ST-GUILLAUME’, namely against all the goods in Classes 3, 18 and 25 and some of the goods in Class 9. The opposition is based on French trade mark registration No 4 558 119 for the word mark ’21 RUE SAINT GUILLAUME’. The opponent invoked Articles 8(1)(a) and (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 on which the opposition is based are the following:

Class 3: Soaps; perfumes; essential oils; cosmetics; lipstick.

Class 18: Wallets; credit card holders [wallets]; bags.

Class 25: Clothing, footwear, headwear; shirts; leather clothing; belts (clothing); gloves (clothing); scarves; hosiery; socks.

The contested goods are the following:

Class 3: Soap; perfumery; eau de cologne; toilet water; perfumes; fragrances for personal use; ethereal oils; cosmetics; make-up; lip rouge; lip glosses; mascara; eyelid shadow; eyeliner; cosmetic rouges; talcum powder, for toilet use; make up foundations; nail varnish; nail varnish removers; toiletries; cosmetic preparations for skin care; cosmetic creams; skin lotion; moisturising creams; facial masks; skin cream; cosmetic preparations for bath and shower; bath oil; bath salts; bath pearls; hair lotions; shampoos; dentifrices; antiperspirants [toiletries]; deodorants for personal use [perfumery]; shaving preparations; shaving soap; shaving gel; shaving cream; after-shave lotions; after-shave gel; shoe polish; hair dyes; cleaning preparations; cosmetics for animals.

Class 9: Optical apparatus and instruments; spectacles; goggles; spectacle lenses; contact lenses; sunglasses; spectacle cords; spectacle cases; cases for sunglasses; spectacle chains.

Class 18: Leather and imitations of leather; animal skins; bags for sports; overnight bags; book bags; animal carriers [bags]; travelling bags; rucksacks; handbags; suitcases; purses; briefcases; duffel bags; textile shopping bags; beach bags; shopping bags with wheels attached; school bags; garment bags for travel; straps for luggage; overnight cases; clutch bags; kit bags; suitcases with wheels; pocket wallets; credit card holders made of leather; key cases; credit-card holders; toiletry bags; vanity cases, not fitted; umbrellas; parasols; walking staffs; whips; harnesses; collars for animals; harness for animals; saddlery.

Class 25: Clothing for men, women and children; shirts; short-sleeved T-shirts; polo shirts; tops [clothing]; knit tops; sweat shirts; tank tops; sweaters; blouses; jerseys [clothing]; turtleneck shirts; shorts; tracksuit bottoms; gym suits; blazers; sport coats; sports jerseys; slacks; pants; blue jeans; skirts; dresses; wedding dresses; suits; overalls; jumper suits; waistcoats; jackets [clothing]; coverups; raincoats; capes; parkas; ponchos; bathing suits; bikinis; bathing trunks; frock coats; rainwear; cagoules; clothing for skiing; leotards; ballet suits; nightwear; pyjamas; bath robes; shower caps; chasubles; underwear; lingerie; dressing gowns; kimonos; shapewear; foundation garments; boxer shorts; leather belts [clothing]; neckties; hats; woolly hats; caps being headwear; visors; earbands; ear muffs [clothing]; scarves; shawls; cuffs; cloth bibs; footwear; gymnastic shoes; sneakers; pumps [footwear]; toe socks; stockings; hosiery; shoes; boots; beach shoes; sandals; slippers; gloves [clothing]; suspenders; layettes [clothing]; sashes for wear.

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 3

Soap; perfumery; perfumes; cosmetics are identically contained in both lists of goods (including synonyms).

The contested make-up; lip rouge; lip glosses; mascara; eyelid shadow; eyeliner; cosmetic rouges; talcum powder, for toilet use; make up foundations; nail varnish; nail varnish removers; toiletries; cosmetic preparations for skin care; cosmetic creams; skin lotion; moisturising creams; facial masks; skin cream; cosmetic preparations for bath and shower; bath oil; bath salts; bath pearls; hair lotions; shampoos; antiperspirants [toiletries]; deodorants for personal use [perfumery]; shaving preparations; shaving soap; shaving gel; shaving cream; after-shave lotions; after-shave gel; hair dyes; cosmetics for animals are included in the broad category of the opponent’s cosmetics in Class 3. Therefore, they are identical.

The contested ethereal oils overlap with the opponent’s essential oils in Class 3. Therefore, they are identical.

The contested eau de cologne; toilet water; fragrances for personal use are identical to the opponent’s perfumes in Class 3, either because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested cleaning preparations include, as a broader category, the opponent’s soaps in Class 3. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dentifrices are similar to the opponent’s cosmetics in Class 3. These goods coincide in purpose, distribution channels, relevant public and may be manufactured by the same kind of undertakings.

The contested shoe polish is similar to the opponent’s soaps in Class 3. These goods coincide in purpose, distribution channels and relevant public.

Contested goods in Class 9

Although different in nature and purpose, the contested goggles in Class 9 are considered similar to a low degree to the opponent’s headwear in Class 25. On the one hand, goggles include ski goggles, and on the other hand, headgear or headwear include hats for skiing. Another example is swimming goggles and swimming caps. These goods are commonly manufactured under the control of the same entity, they are offered for sale in the same specialised shops or sports departments in stores, and satisfy the needs of the same public.

The contested optical apparatus and instruments; spectacles; spectacle lenses; contact lenses; sunglasses; spectacle cords; spectacle cases; cases for sunglasses; spectacle chains are dissimilar to the opponent’s goods in Classes 3, 18 and 25. These goods have a different nature, purpose and method of use. They are neither complementary nor in competition. Furthermore, they do not originate from the same undertakings, they are offered through different distribution channels and target a different relevant public.

The opponent refers to previous decisions of the Office (08/08/2007, B 1 013 087; and 05/08/2005, B 645 319) to support its arguments that, for instance, sunglasses and cases for sunglasses are similar to clothing. 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).

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. This is applicable in the present case and it should also be pointed out that the decisions were taken a long time ago and the practice of the Office might have been changed in the meantime. Furthermore, luxury goods such as glasses (Class 9) are considered to be dissimilar to clothing, footwear and headgear. The nature and the main purpose of these goods are different. The main function of clothing is to dress the human body whilst the main purpose of glasses is to improve eyesight, and jewels are worn for personal adornment. They do not have the same distribution channels and they are neither in competition nor complementary (30/05/2011, R 106/2007-4, OPSEVEN2 / 7SEVEN (fig.), SEVEN (fig.), § 14; 12/09/2008, R 274/2008-1, Penalty / PENALTY, § 20; 05/10/2011, R 227/2011-2, OCTOPUSSY / OCTOPUSSY (fig.) et al., § 23-26).

Contested goods in Class 18

The contested bags for sports; book bags; animal carriers [bags]; travelling bags; overnight bags; rucksacks; handbags; purses; briefcases; duffel bags; textile shopping bags; beach bags; shopping bags with wheels attached; school bags; garment bags for travel; clutch bags; kit bags; toiletry bags are included in the broad category of the opponent’s bags in Class 18. These goods are identical.

The contested pocket wallets are included inthe broad category of the opponent’s wallets in Class 18. These goods are identical.

The contested credit card holders made of leather are included in the broad category of the opponent’s credit card holders [wallets] in Class 18. These goods are identical.

The contested suitcases; straps for luggage; overnight cases; suitcases with wheels key cases; vanity cases, not fitted are at least similar to the opponent’s bags in Class 18. These goods coincide in distribution channels, relevant public and may be manufactured by the same kind of undertakings.

The contested leather and imitations of leather; animal skins; umbrellas; parasols; walking staffs; whips; harnesses; collars for animals; harness for animals; saddlery are dissimilar to all the opponent’s goods in Classes 3, 18 and 25. For example, leather and imitations of leather; animal skins refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. All the contested goods have a different nature, purpose and method of use. They are neither complementary nor in competition. Furthermore, they do not originate from the same undertakings, they are offered through different distribution channels and target a different relevant public.

Contested goods in Class 25

The contested clothing for men, women and children; shirts; short-sleeved t-shirts; polo shirts; tops [clothing]; knit tops; sweat shirts; tank tops; sweaters; blouses; jerseys [clothing]; turtleneck shirts; shorts; tracksuit bottoms; gym suits; blazers; sport coats; sports jerseys; slacks; pants; blue jeans; skirts; dresses; wedding dresses; suits; overalls; jumper suits; waistcoats; jackets [clothing]; coverups; raincoats; capes; parkas; ponchos; bathing suits; bikinis; bathing trunks; frock coats; rainwear; cagoules; clothing for skiing; leotards; ballet suits; nightwear; pyjamas; bath robes; shower caps; chasubles; underwear; lingerie; dressing gowns; kimonos; shapewear; foundation garments; boxer shorts; leather belts [clothing]; neckties; earbands; ear muffs [clothing]; scarves; shawls; cuffs; cloth bibs; toe socks; stockings; hosiery; gloves [clothing]; suspenders; layettes [clothing]; sashes for wear are identically mentioned or included in the broad category of, or overlap with, the opponent’s clothing in Class 25. These goods are identical.

The contested hats; woolly hats; caps being headwear; visors are included in the broad category of, or overlap with, the opponent’s headwear in Class 25. These goods are identical.

The contested footwear; gymnastic shoes; sneakers; pumps [footwear]; shoes; boots; beach shoes; sandals; slippers are included in the broad category of, or overlap with, the opponent’s footwear in Class 25. These goods 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 (at least) similar (to varying degrees) are directed at the public at large.

The degree of attention is average.

c) The signs

21 RUE SAINT GUILLAUME	21 RUE ST-GUILLAUME
Earlier trade mark	Contested sign

The relevant territory is France.

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 mark is the word mark ’21 RUE SAINT GUILLAUME’. The contested sign is the word mark ’21 RUE ST-GUILLAUME’. The French public would perceive both marks as referring to an address in a French city. Even though they have this meaning, they have no relation whatsoever to the relevant goods and are distinctive.

This contrary to the applicant, in its observations, where it points out that the degree of distinctiveness of the trade mark ’21 RUE SAINT GUILLAUME’ is to be considered from average to low, and the scope of protection of the trade mark of the opponent needs to be considered to be rather small. The Opposition Division does not agree with the applicant in this respect as the marks are not descriptive, allusive or otherwise weak in relation to the relevant goods, and therefore, they have an average degree of distinctiveness.

Visually, the signs coincide in the number, words and letters ‘21 RUE S***T GUILLAUME’. However, they differ in the hyphen between the words ‘ST’ and ‘GUILLAUME’ and in the abbreviation of ‘ST’ of the word ‘SAINT’ of the contested sign.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the number and words ‘21 RUE SAINT/ST(-)GUILLAUME’, present identically in both signs. The presence of the hyphen in the contested sign has no bearing on the pronunciation and the abbreviation of ‘ST’ will be pronounced by the French public as being ‘SAINT’.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as having the same meaning, the signs are conceptually identical.

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

A likelihood of confusion (including a likelihood of association) 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.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods have been found to be partly identical, partly similar (to varying degrees) and partly dissimilar.

The signs are visually similar to a high degree and aurally and conceptually identical. The earlier mark has a normal degree of distinctiveness.

Taking into account all relevant factors, it is considered that the relevant public might be led to believe that the relevant goods come from the same undertaking or economically linked undertakings. The high degree of visual similarity, the at least high degree of aural similarity and conceptual identity will clearly counterbalance even the low degree of similarity between some of the goods, according to the interdependence principle mentioned above.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying degrees) to those of the earlier trade mark, even with regard to the goods found to be similar to a low degree.

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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the goods are obviously not identical.

The applicant’s argumentation might be interpreted as an indication that its EUTM application has a reputation, or in the wording of the applicant ‘The applicant is a renowned high end fashion producer that operates within the legacy of the late and very famous fashion designer Karl Lagerfeld’ and ‘The Applicant has meanwhile acquired distinctiveness by means of long term use of the trade marks’. However, as regards this claim, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

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

Saida CRABBE

Chantal VAN RIEL

Michal KRUK

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.