OPPOSITION Nо B 3 123 421

 

El Corte Inglés, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Alyadua Tekstil Otomotiv Turizm Ve Insaat San. Tic. Ltd. Sti., Yenigün Mah. Gazi Osman Pasa Bulvari No: 58/72 K:7, 35240 Konak / Izmir, Turkey (applicant), represented by Goldcliff Stark, Wächtersbacher Straße 90, 60386 Frankfurt Am Main, Germany (professional representative).

On 07/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 1. Opposition No B 3 123 421 is rejected in its entirety.

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

 

REASONS

 

On 08/06/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 211 422 (figurative mark), namely against all the goods and services in Classes 25 and 35. The opposition is based on European Union trade mark registration No 3 788 999, ‘ALIA’ (word mark) and Spanish well-known mark No 3 788 999, ALIA (word mark). The opponent invoked  Article 8(1)(b) EUTMR, Article 8(2)(c) EUTMR and Article 8(5) EUTMR.

 
PRELIMINARY REMARK

The opponent invokes the European Union trade mark registration No 3 788 999 and claims the same mark in the same country as a well-known mark. This will be taken as an additional claim that its registered mark has acquired a high degree of distinctiveness by use.

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 3 788 999.

a) The goods and services

 

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

 

Class 3: Perfumery, essential oils, cosmetics, hair lotions; dentrifrices.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith not included in other classes; jewellery, costume jewellery, precious stones; horological and chronometic instruments.

Class 18: Leather and imitations of leather, and goods made of these materials (not included in other classes); animal skins, hides; trunks and traveling bags; umbrellas, parasols, canes and walking sticks; whips, harness and saddlery.

Class 25: Clothing; headgear; footwear.

The contested goods and services are the following:

Class 25: Clothing; headgear; footwear.

Class 35: Retail services connected with the sale of clothing and clothing accessories; wholesale services relating to clothing; advertising services relating to clothing; online ordering services; online retail services relating to clothing; online retail services relating to handbags; online retail services relating to jewelry.

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 25

Clothing, footwear and headgear are identically contained in both lists of goods.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34).

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning
of the category. The principles set out above in relation to retail services apply to the various services rendered that revolve exclusively around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services.

Therefore, retail services connected with the sale of clothing; wholesale services relating to clothing; online retail services relating to clothing; online retail services relating to jewelry, are similar to an average degree to the opponent’s clothing in Class 25 and to the opponent’s jewelry in Class 14. Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

There is a low degree of similarity between the retail services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the perspective of the consumer. Therefore, the contested retail services connected with the sale clothing accessories; online retail services relating to handbags are similar to a low degree to the opponent’s clothing in Class 25. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialized shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer

 

The contested advertising services relating to clothing; online ordering services are dissimilar to all the opponent’s goods. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalized strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. Online ordering services consist of providing others with assistance in the order by customer of its good or services. These services are provided by different companies, target a different public and are provided through different channels of distribution.

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 services found similar to varying degrees are directed at the public at large.

The degree of attention will be average. 

c) The signs

 

ALIA
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 earlier mark is the word mark ‘ALIA’. A part of the relevant public may perceive the sign as a first name, namely as the feminine form of the Arabic name ‘Ali’ . It cannot be excluded that some consumers in the relevant territory will associate ‘Alia’ with the Latin word ‘alia’ meaning ‘other, another’, also used in the phrase ‘inter alia’, which means ‘among other things’. In any event as it has no relation with the relevant goods it has an average degree of distinctiveness.

The contested sign is figurative and is composed of the verbal element ‘ALYADUA’ in standard, black upper case letters and above it a depiction in orange similar to a butterfly, which are co-dominant elements. The term ‘ALYADUA’ is meaningless for the relevant public and it has, therefore, an average degree of distinctiveness.

  

Visually, the signs coincide in their first two letters, ‘AL’ and the fourth letter ‘A’. However, they differ in their third letter, ‘i’ of the earlier mark and ‘Y’ of the contested sign and in the three additional letters of the contested sign, ‘DUA’ and thus, in the length of the signs (four letters of the earlier sign versus seven letters of the contested sign). They also differ in the figurative element of the contested sign which is similar to a butterfly.

The opponents argues that the marks in conflict have the same beginning. However, it must be recalled that, although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

 

Therefore, the signs are visually similar to at most, below an average degree.

  

Aurally, in almost all of the languages of the relevant territory, (although it cannot be excluded that a small part of the public would pronounce the first letter ‘A’ of the signs differently), the pronunciation of the signs coincides in the sound of their first two letters, ‘AL’, present identically in both signs. In most cases, the signs will also coincide in the sound of their third letters, namely ‘i’ in the earlier mark and ‘Y’ in the contested sign, as they will be pronounced identically, for example in French and in their fourth letter ‘A’. However in some languages, as in Spanish, the syllables of the contested sign will be pronounced differently, as ‘AL-YA-DUA’, and the earlier sign’s syllables as ‘
A-LIA’. For all the relevant public, the pronunciation of the signs differs in the sound of the contested sign last letters ‘DUA’.

Therefore, for the part of the public described above, the degree of aural similarity between the signs may vary between low and average.

 

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For a part of the public, which only will grasp the meaning of the butterfly in the contested sign, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the part of the public which grasps the meaning explained above of the earlier mark, and the meaning of the butterfly in the contested sign, as the signs will be associated with a dissimilar meanings, the signs are conceptually not 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) 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.

 

According to the opponent, the earlier trade mark has a reputation and enjoys a high degree of distinctiveness as result of its long standing and intensive use in Spain in connection with all goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

 

The evidence submitted by the opponent comprises the following:

  

1) Articles regarding ALIA trade mark

 Article in Spanish appeared in http://www.mujerhoy.com/tendencias/moda-t ‘Alía, la mejor moda premamá para el invierno 2012’ regarding the new fashion for winter 2012.

 Article in Spanish appeared in https://www.bebesymas.com/embarazo/la-nueva-coleccion-premama-d, with the headline ‘La nueva colección premamá de Alía apuesta por lo clásico’, dated 18/11/2016. The article includes pictures showing clothing for pregnant women.

 Article in Spanish, undated, appeared in http://www.telva.com/2009/06/25/embarazo/... Where in a general article, the trade mark Alía is mentioned for clothing for pregnant women.

 Article in Spanish appeared in https://www.terra.es/vidayestilo/moda/zooey-...the trade mark ‘ Alía’ and other marks, are mentioned, in relation with clothes for pregnant woman. Dated 15/01/2015.

 Article in Spanish appeared in http://www.elmundo.es/yodonablogs/2006/06/08/shopping/114975248..., the trade mark Alía is mentioned for clothing for pregnant women.

 Several articles in Spanish appeared in http://www.ropa-premama.es/tag/alia, showing Alía’s clothing collection for fall 2010 and the international model Estefanía Luyk wearing Alia’s clothing for the 2010/2011 fall/winter season, and Alía’s clothing for the summer season 2010.

 Article in Spanish appeared in http://estoyalamoda.com/tendencias-pre-mam... On clothing trends for pregnant women, dated 25/02/2016, the trade mark ‘ Alía’ is mentioned.

 Publicity in Spanish of Alía trade mark, appeared in http://www.vogue.es/moda/tendencias/articulos/alia-de-el-corte-ingles/1598. Dated on 2017.

 Article in Spanish appeared in http://www.demujermoda.com/marcas/las-8-tiendas-de-ropa-premama-mas-fashion/. The trade mark ‘ Alía’ is mentioned, with other marks, in relation with clothes for pregnant woman. Dated on 2015.

2) Brochures and catalog of ALIA trade mark,

 Copy of the brochure for the season fall/ winter 2012/2013, regarding clothing for pregnant women.

 Print-outs from the brochure on-line from ‘El Corte Inglés’ regarding 2016 season, and mentioning ‘ALIA’ trade mark.

 Print-outs from the ‘Corte Inglés’’ web site corresponding to Alía’s clothing for pregnant women, showing pieces of clothing and including their prices.

 

3) Articles about ALIA’s products

 Article in Spanish regarding the collaboration of the opponent with the organization ‘ACNUR’ from http://www.republica.com/2015/08/27/el-corte...

 Article in Spanish regarding clothing form working pregnant women, where the trade mark ‘Alía’ , inter alia, is mentioned, from the http://www.elconfidencialdigital.com/la_bue... Dated 24/08/2015.

 Article in Spanish dated 07/01/2017 regarding the start of sales in ‘The Corte Inglés´’ outlets, mentioning the trade mark ‘Alía’ , from the website https://www.capitalmadrid.com/2017/1/7/447...

 

The evidence mentioned above is not sufficient to prove the high distinctiveness of the opponent’s earlier trade mark, because despite showing some use of the trade mark, the evidence provides little information on the extent of such use prior to the relevant date of the contested application. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public at that time. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. The documents filed do not include information on the number of visits to websites or market research. From the articles filed, the Opposition Division cannot ascertain, the degree of recognition of the mark in the Spanish market, the documents filed which show publicity in some online media in Spain, are not further accompanied by details of the media exposition to the relevant public. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public at the relevant date.

Having examined the material listed, the Opposition Division concludes that the evidence submitted by the opponent to prove the reputation, highly distinctive and well-known character of the earlier mark, does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use or because of the recognition it possesses on the market. The evidence does not show that the trade mark is known by a significant part of the relevant public at the relevant date.

 

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 on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

The goods under comparison are identical and the services are partly similar to varying degrees and partly dissimilar. They target the public at large with an average degree of attention and the earlier mark’s distinctiveness is normal.

The signs are visually similar to at most, below an average degree and aurally similar to a low degree or to an average degree depending on the aural pronunciation of the contested mark, and conceptually not similar. Even with an average degree of aural similarity, there will be no likelihood of confusion as, for the goods in Class 25, normally, it is the visual aspect that counts more. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the visual differences between the signs caused by the additional letters and the figurative element are particularly relevant when assessing the likelihood of confusion between them.

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyze its various details (12/06/2007, C 334/05 P, Limoncello, EU:C:2007:333, § 35).

For a likelihood of confusion to be found, it is not, in general, sufficient for any degree of similarity to be demonstrated; the similarity must be such that the relevant public might consider that the goods and/or services offered originated from the same undertaking or economically linked undertakings.

Considering all the above, even for identical goods and similar to varying degrees services there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

  

Given that the opposition is not successful under Article 8(1)(b) EUTMR, it is necessary to examine the other ground on which the opposition is based, namely Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

 

The Opposition Division will examine the opposition in relation to earlier EUTM registration No 3 788 999 for which the opponent claimed repute in Spain.

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

 

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

 

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

 

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 

 The signs must be either identical or similar.

 

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

 

a) Reputation of the earlier trade mark

 

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

 

In them, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation. Despite showing some use of the trade mark, the evidence provides little information on the extent of such use prior to the filing date of the contested application. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public at that time. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. The documents filed do not include information on the number of visits to websites or market research. From the articles filed, the Opposition Division cannot ascertain, the degree of recognition of the mark in the Spanish market, the documents filed which show publicity in some online media in Spain, are not further accompanied by details of the media exposition to the relevant public. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public at the relevant date.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

 

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

 

In any case, the Opposition Division also notes that the opponent did not provide any facts, or evidence that could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

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

 

 

Ana MUÑÍZ RODRÍGUEZ

Aurelia PEREZ BARBER

Julia GARCÍA MURILLO

 

 

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.