OPPOSITION No B 2 643 289

Marks and Spencer plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray's Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

Dongmei Du, Via di Santa Croce in Gerusalemme 87, 00185 Rome, Italy (applicant).

On 01/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 643 289 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 673 008, namely against all the goods in Classes 18 and 25. The opposition is based on European trade mark registration No 2 347 870. 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.

1. The goods

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas, parasols and walking sticks.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 18: Leather and imitation leather; studs of leather; girths of leather; straps made of imitation leather.

Class 25: Clothing; hats.

Contested goods in Class 18

The contested leather and imitation leather are identically contained in both lists of goods.

The contested studs of leather; girths of leather are included in the broad category of the opponent’s goods made of these materials (leather) and not included in other classes. Therefore, they are identical.

The contested straps made of imitation leather are included in the broad category of the opponent’s goods made of these materials (imitations of leather) and not included in other classes. Therefore, they are identical.

Contested goods in Class 25

The contested clothing is identically contained in both lists of goods.

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

2. 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 both at the public at large (the clothing for example) or at business customers with specific professional knowledge or expertise (the leather and imitation leather for example). The degree of attention is average.

3. The signs

PER UNA
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 a word mark consisting of the verbal elements ‘PER UNA’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is not relevant whether they are represented in upper or lower case character or a combination of those.

The contested sign is a figurative mark consisting of the verbal element ‘Una’ capitalized and written in standard black letters. The latter is surrounded by a black rectangle which itself is placed in the lower part of a bigger black rectangle.

The Italian speaking part of the public will recognize the word ‘UNA’ in the earlier mark as being an indefinite pronoun since it is preceded by the preposition ‘PER’ standing for ‘to’ or ‘for’. Bearing in mind the relevant goods, the words in the earlier mark can be allusive for this part of the public as they might understand that they are meant for women. Furthermore, part of the public speaking a Latin language will understand the word ‘UNA’ in both sign either as being a number or a pronoun because it is either identical or very similar in their language; for example, ‘una’ in Spanish and ‘une’ in French.

As for the distinctiveness of the remaining elements of the contested sign, it should be noted that the rectangles are less distinctive than the verbal element of the mark. This is because these elements are of a purely decorative nature (simple geometric shapes). It is for this reason that the other element in the contested sign is considered more distinctive. Consequently, these elements have only a limited impact when assessing the likelihood of confusion between the marks.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘UNA’. However, they differ in the additional verbal element ‘PER’ in the earlier mark and in the additional rectangles in the contested sign.

Account should be taken of the fact that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In the present case, the verbal element of the contested sign consists of just three letters whereas the earlier mark consists of two verbal elements of three letters each.

Furthermore, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Here, the coincidences are contained at the end of the earlier trade mark and, as a consequence, the impact on consumers is more limited. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‛UNA’, present identically in both signs and which is kind of allusive for a part of the public. The pronunciation differs in the sound of the letters ‛PER’ of the earlier sign which has no counterpart in the contested mark and which is placed at the beginning of the earlier mark. Therefore, the signs are aurally similar to a low degree.

Conceptually, as already mentioned, the Italian speaking part of the public will recognize the word ‘UNA’ in the earlier mark as an indefinite pronoun since it is preceded by the preposition ‘PER’ standing for ‘to’ or ‘for’. In the contested sign, they will perceive it either as a number or as a pronoun. However, given the allusive character of the expression ‘PER UNA’ in the earlier mark, the signs are conceptually similar to a low degree for this part of the public.

The part of the public speaking other Latin languages such as the Spanish- or French- speakers will also recognize the word ‘UNA’ in both signs as being a number or a pronoun since they are either identical or very similar in their respective language. For this part of the public, the signs are similar to an average degree.

For the rest of the public that will not understand the meaning of the verbal elements of either of the signs, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the goods in question and for the Italian-speaking part of the relevant public. The mark has a normal degree of distinctiveness for the part of the relevant territory where it has no meaning in relation with the goods.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison “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).

Even taking into account that the contested goods are identical to the opponent’s goods, the signs are visually aurally and, with respect to the Italian-speaking part of the public, conceptually similar to a low degree. They are conceptually similar to an average degree for the part of the public speaking other Latin languages since they will only understand the word ‘UNA’. For the rest of the public that will not understand the meaning of the verbal elements of either of the signs, the conceptual aspect does not influence the assessment of the similarity of the signs. This is because the additional elements are clearly perceivable, and in overall terms sufficient to exclude any likelihood of confusion between the marks.

Indeed, despite the fact that the contested sign reproduces part of the earlier mark, it must be taken into consideration that the former only consists of three letters. For short marks the fact that they differ in one element is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs; any difference or additional element will easily be noticed by consumers.

In addition, as already mentioned, the additional verbal element is placed at the beginning of the earlier mark. It should be reminded that elements placed at the beginning of the signs are the ones that first catch the attention of consumers. In other words, the clearly differing beginnings of the marks will first catch the consumers’ attention and lead to the conclusion that the signs under comparison are different.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Chantal VAN RIEL

Sandra IBAÑEZ

Benoit VLEMINCQ

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 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 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 720 has been paid.