OPPOSITION No B 2 505 728
Madeleine Mode GmbH, Im Pinderpark 7, 90513 Zirndorf, Germany (opponent), represented by Lindner/Blaumeier Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Dr.-Kurt-Schumacher-Str. 23, 90402 Nürnberg, Germany (professional representative)
a g a i n s t
Mad Lily LLC, 24 The Waterway, Plandome Heights, Delaware, NY 11030, United States of America (applicant), represented by Pons Patentes y Marcas Internacional S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of European Union
trade mark application No
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 German trade mark registration No 2 056 283, since this mark covers a greater scope of goods.
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear.
Class 14: Jewellery, precious stones.
The contested goods are the following:
Class 14: Jewellery.
Class 25: Clothing, namely, dresses, tops, t-shirts, sweaters, skirts, pants, and scarves.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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
Jewellery is identically included in both lists of goods.
Contested goods in Class 25
The contested dresses, tops, t-shirts, sweaters, skirts, pants, and scarves are included in the broad category of the opponent’s clothing. Therefore, they are identical.
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 are directed at the public at large. The degree of attention will vary from average to high, as, when purchasing expensive goods, which some of the jewellery in Class 14 and even some of the clothing articles in Class 25 can be, the consumer will generally exercise a higher degree of attention and will buy the goods only after careful consideration. Non-specialised or non-professional consumers often seek professional assistance or advice when choosing or buying certain types of goods and services. The degree of attention may be higher than average in the case of luxury goods and where the specific product is regarded as reflecting the social status of its owner.
Earlier trade mark
The relevant territory is Germany.
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).
Both marks are word marks. They have, therefore, no dominant elements. In the case of word marks, the word as such is protected and not its written form. Therefore, it is irrelevant whether word marks are depicted in lower case or upper case letters.
Furthermore, the words ‘Madeleine’/‘MADELINE’, as well as the word ‘LILY’ of the contested mark, will be perceived as female names in the relevant territory. Therefore, their degree of distinctiveness is considered average.
Visually, the signs coincide in all the letters of the first word element of the contested mark and in eight of nine letters of the only word element that constitutes the earlier mark. They differ in the letter ‘e’ placed in the middle of the earlier mark and in the second word element, ‘LILY’, of the contested mark.
There are five identical letters in a row at the beginning of the word elements ‘Madeleine’/‘MADELINE’ and three at the end.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MADELINE’, present identically in both signs. The pronunciation differs in the sound of the letter ‘e’ placed in the middle of the earlier mark, which has no counterpart in the contested sign, and in the sound of the syllables ‘LILY’ of the contested sign, which has no counterpart in the earlier mark. However, a part of the relevant public may pronounce the elements ‘Madeleine’ and ‘MADELINE’ identically, since they will be perceived as the same name of foreign origin.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the public in the relevant territory will perceive both signs as female names, that is, the name ‘Madeleine’, which is of French origin, in the earlier mark and the cognate ‘MADELINE’ in the contested sign. The relevant public will also perceive the word ‘LILY’ in the contested sign as a female name. As the signs will be associated with the same name or very similar names, the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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.
Global assessment, other arguments and conclusion
The conflicting goods are identical.
The marks are visually, aurally and conceptually similar. There are five identical letters in a row at the beginning of the word elements ‘Madeleine’/‘MADELINE’ and three at the end. The additional letter ‘e’ in the middle of the earlier mark may be overlooked. It is very likely that the consumer in the relevant territory will consider the proper nouns ‘Madeleine’/‘MADELINE’ to be the same female name, since it is a name of foreign origin. The addition of the element ‘LILY’ at the end of the contested mark may lead the consumer to believe that the conflicting marks have the same commercial origin, for example that the contested sign, with the additional word ‘LILY’, represents a new line or a parallel line of the opponent’s products (05/09/2007, T‑220/06, Jako-o, EU:T:2007:244).
Finally, the evaluation of 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 goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Bearing in mind the identity between the goods and the average degree of distinctive character of the earlier mark, the Opposition Division finds that the differences between the marks, as described in detail in section c) of this decision, are not sufficient to counteract the similarities between them and to safely exclude any likelihood of confusion on the part of the public. The relevant consumer may erroneously think that the identical goods come from the same undertaking or from economically linked undertakings, even in relation to goods in Class 14 to which the consumer will pay a higher degree of attention.
Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 2 056 283. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right No 2 056 283 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) EUTMR.
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall 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 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.