OPPOSITION No B 2 504 325

Paprika S.A., Parc Industriel 9, 1440 Wauthier-Braine, Belgium (opponent), represented by De Clercq & Partners, Edgard Gevaertdreef 10 a, 9830 Sint-Martens-Latem, Belgium (professional representative)

a g a i n s t

Federica Ceron, Via della Pineta 4, 36040 Brendola (Vicenza), Italy (applicant).

On 14/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 504 325 is partially upheld, namely for the following contested goods:

Class 25: Clothing, footwear, headgear.

2. Community trade mark application No 13 381 306 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 381 306. The opposition is based on Benelux trade mark registration No 819 809. The opponent invoked Article 8(1)(b) CTMR.

ADMISSIBILITY

According to Article 41(1) CTMR, the notice of opposition must be filed within a period of three months following the publication of the CTM application.

According to Rule 17(2) CTMIR, if the notice of opposition has not been filed within the opposition period, and if the deficiency has not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

The contested Community trade mark application was published on 26/12/2014. The opposition period expired on 26/03/2015. The notice of opposition based on the earlier Benelux trade mark registration No 819 809 was received on 26/03/2015, i.e. within the opposition period. However, on 10/04/2015 the opponent filed notice of opposition based further on the Benelux registration No 733 704 and Community trade mark No 9 605 452 . It was lodged after the expiry of the period of three months following the publication of the Community trade mark application against which it is directed.

The opposition must therefore, be rejected as inadmissible, as far as it is based on these earlier marks.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods

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

Class 18: Leather and imitations of leather.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 14: Jewellery, precious stones; Alloys of precious metal; Articles of jewellery coated with precious metals; Costume jewellery; Horological and chronometric instruments; Jewellery coated with precious metal alloys.

Class 25: Clothing, footwear, headgear.

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 14

The contested jewellery, precious stones; alloys of precious metal; articles of jewellery coated with precious metals; costume jewellery; horological and chronometric instruments; jewellery coated with precious metal alloys are various kinds of jewellery, precious stones, horological and chronometric instruments and even raw materials (alloys of precious metal). These goods are dissimilar to the opponent’s clothing, footwear, headgear. They are not in competition nor complementary to each other. The production of these goods involves different know-how. Whilst it is true that some of the contested goods (such as jewellery or some horological instruments, such as watches) are wearable goods as well as the opponent’s clothing, the nature, purpose and commercial origin of these goods are different. Jewellery’s primary purpose is to adorn and the purpose of watches is to inform about time, while main function of clothing is to dress the human body and protect it from the elements. The fact that some fashion designers nowadays may also sell fashion accessories (such as watches or jewellery) under their marks, as invoked by the opponent, is not deemed sufficient to establish similarity, since this is not the rule, and rather applies to a limited number of (economically) successful designers.

Furthermore, the opponent’s leather and imitations of leather in Class 18 are various kinds of animals’ skins (or imitations thereof). These are raw materials. They are intended for use in industry rather than for direct purchase by the final consumer. Their nature, purpose, method of use, relevant public and distribution channels are different than those of the contested goods. These goods are therefore dissimilar.

Contested goods in Class 25

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

2. The signs

PAPRIKA
Earlier trade mark	Contested sign

The relevant territory is the Benelux countries.

The earlier mark is a word mark consisting of the verbal element ‘PAPRIKA’. The contested sign is a figurative mark composed of the letters ‘Papr(*)Ka’, represented in black standard typeface with capitalised letters ‘P’ and ‘K’ and the figurative element placed between the letters ‘r’ and ‘K’, depicting a black chilli pepper.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘PAPR(*)KA’. However, they differ in the stylisation of the contested sign, as well as in the letter ‘I’ placed in the fifth position in the earlier mark versus the figurative element of the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs will be pronounced identically by the relevant public, since the contested sign’s figurative element representing a chili pepper will be pronounced as a letter ‘i’ due to its position in the mark and the fact that it produces a meaningful word ‘paprika’.

Conceptually, the term ‘PAPRIKA’ will be understood as a powder condiment (by the French-, German- and Dutch-speaking consumers) or as the fruit or plant from which this condiment is obtained - capsicum or pepper (by the German- and Dutch-speaking consumers). Taking into account that the figurative element of the contested sign, due to its position in the mark and the fact that it produces a meaningful word, will be pronounced as the letter ‘i’, it is considered that the contested sign will be perceived as a fanciful representation of the word ‘paprika’ and associated with the same meaning as the earlier mark. It is particularly the case since the figurative element of the contested sign depicts a chilli pepper, which is a kind of pepper and is often used to obtain the abovementioned powder condiment and, therefore, conveys the same (or closely associated) meaning as the conflicting marks.

As both signs will be associated with the same meaning, the signs are conceptually identical.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar to a high degree.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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.

5. 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 will be average.

6. Global assessment, other arguments and conclusion

The contested goods were found to be partly identical and partly dissimilar to those of the opponent. The conflicting marks are visually similar to the extent that they coincide in the sequence of letters ‘PAPR(*)KA’. Moreover, as explained in detail in section b) of the decision, the marks are aurally and conceptually identical.

The differences between the marks lie in the stylisation of the contested sign, as well as in the letter ‘I’ placed in the fifth position in the earlier mark versus the figurative element representing a chili pepper of the contested sign.

However, with regard to the figurative element and the stylization of the contested sign, it must be reminded that when signs consist of both word and figurative components, the principle has been established that the word element of the sign usually has a stronger impact on the consumer than the figurative one. This is because the public tends not to analyse signs and will most readily refer to a sign by its verbal component. Therefore, the additional figurative element and stylisation of the contested sign are of minor importance, since consumers will focus their attention on the verbal element.

Account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks, but must place their trust in the imperfect picture or recollection of them that they have kept in their minds (see judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik’, paragraph 26). Moreover, in general, the established similarities between trade marks, rather than their differences, are retained in the average consumer's recollection.

Furthermore, the Court has set out the essential principle that assessment of the 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 these goods and services may be offset by a greater degree of similarity between the marks and vice versa (judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 17). In the present case, the partial identity of the goods counteracts the abovementioned dissimilarities between the signs.

In the light of the foregoing, it is concluded that the differences between the signs are not enough to outweigh the significant similarities found between them. Considering all the above, particularly taking into account the partial identity of the goods in question, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore the opposition is partially well founded on the basis of the opponent’s Benelux trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Gordana TRIPKOVIĆ

Eamonn KELLY

Ana MUÑIZ RODRIGUEZ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.