OPPOSITION Nо B 3 111 369

 

Naked GmbH, Dorfstrasse 36, 5101 Bergheim, Austria (opponent), represented by Burgstaller & Partner Rechtsanwälte, Landstraße 12, 4020 Linz, Austria (professional representative) 

 

a g a i n s t

 

Αικατερινη Βαμβακα Και Σια Εε, Δερβενακιων 23, 15351 Παλληνη, Greece (applicant), represented by Αννα Γιακουμη, Αλκαμενους 12, 10439 Αθηνα, Greece (professional representative).

On 21/01/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 111 369 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 178 400 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 18 178 400 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 16 936 817 ‘NAKED’ (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.

 

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 16 936 817.

a) The goods

 

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

 

Class 25: Clothing; bottoms [clothing]; shorts; belts [clothing]; headbands [clothing]; gloves [clothing]; tee-shirts; printed t-shirts; headgear; skull caps; caps [headwear]; sportswear; ski boots; snowboard shoes; trunks; tank tops; snow suits.  

The contested goods are the following:

 

Class 18: Handbags.

Class 25: Hats; clothing; parts of clothing, footwear and headgear.

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 18

Clothing, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

 

Goods such as bags, handbags, purses, etc. in Class 18 are related to articles of clothing, headgear and footwear in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing, headgear and even footwear because they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, the contested handbags and the opponent’s clothing are considered to be similar.

Contested goods in Class 25

Clothing is identically included in both lists of goods.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested parts of clothing, footwear and headgear apart from including integral parts of clothing, footwear and headgear directed at their manufacturers, include also detachable parts, which could be bought separately by the end consumers, like bra straps (clothing), insoles (footwear) and detachable neck flaps (headgear). Therefore, considering their rather broad formulation, which may encompass goods sold along with clothing, footwear and headgear, they are similar to the opponent’s clothing, ski boots and headgear as they may coincide in producer, relevant public and distribution channels. Moreover, they are complementary.

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.

 

The degree of attention is considered to be average.

 

 

c) The signs and distinctiveness of the earlier mark

 

NAKED
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 common element ‘NAKED’ is 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 the Italian- and Spanish-speaking public, for which this element is normally distinctive. Considering that the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se, which is normal.

 

The additional element ‘CIRCUS’ of the contested sign is very close to the equivalent word in the official language in the relevant territories, circo in both Italian and Spanish. Since it is not related to any characteristics of the goods at issue, it is normally distinctive. Considering its position as second word of the sign, placed also below the element ‘NAKED’, it will not be focused on by the consumers. In fact, 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 (and from top to bottom), which makes the part placed at the left (or at the top) of the sign (the initial part) the one that first catches the attention of the reader.

The contested sign’s stylisation consists on the fact that some of the letters have some missing parts that are deleted. However, they are readily recognisable and the verbal components ‘NAKED CIRCUS’ are readily perceptible as such on behalf of the relevant public. Otherwise, the black, bold, capitalised font used to depict the letters is quite regular. The square label surrounding the verbal elements is a banal element devoid of any distinctiveness. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

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

 

Visually and aurally, the signs coincide in the distinctive element ‘NAKED’, placed at the beginning of the contested sign and being the sole element of the earlier mark. However, they differ in the second element of the contested sign, ‘CIRCUS’, which is also distinctive but in second position. Visually, the stylisation of the contested sign does not prevent consumers from perceiving the letters as such, as explained above. Furthermore, as consumers are accustomed to the stylisation of verbal elements in trade marks, they will perceive such stylisation of the contested sign as merely a decorative depiction of the word elements.

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

  

Conceptually, although the public in the relevant territory will perceive the meaning of the additional verbal element of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

 

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

 

 

d) Global assessment, other arguments and conclusion

 

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

Furthermore, 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).

In the present case, the goods are identical or similar and are addressed to the public at large that will display an average degree of attention.

The earlier mark enjoys a normal degree of distinctiveness.

The signs are visually and aurally similar to an average degree due to the fact that the earlier mark is entirely reproduced as the first element of the contested sign. Conceptually, the signs are not similar, due to the contested sign’s additional meaningful element ‘CIRCUS’.

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 covered are from the same or economically linked undertakings. Therefore, 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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is common in the fashion sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49; 15/10/2015, T-642/13, she (fig.) / SHE et al.). Indeed, the relevant consumers are likely to think that the contested sign is a sub-brand of the earlier mark to the extent that it offers another line of fashion articles.

 

Considering all the above, there is a likelihood of confusion on the part of the Italian- and Spanish-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 16 936 817. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier right ‘NAKED’ 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

 

 

Sofía SACRISTÁN MARTÍNEZ

Valeria ANCHINI

Sandra IBAÑEZ

 

 

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.