OPPOSITION No B 2 776 204

Gennaro Ferrante, Via Orazio 138, 80122 Napoli, Italy (opponent), represented by Fiammenghi - Fiammenghi S.r.l., Via delle Quattro Fontane, 31, 00184 Roma, Italy (professional representative)

a g a i n s t

Ory International 1964 S.L., Polígono Industrial Toses C/Amsterdam 4, 43870 Amposta / Tarragona, Spain (applicant), represented by Newpatent, Puerto 34, 21001 Huelva, Spain (professional representative).

On 03/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 776 204 is upheld for all the contested goods, namely all the goods in Class 25.

2. European Union trade mark application No 15 503 816 is rejected for all the contested goods. It may proceed for the remaining, non-contested services in Classes 35 and 39.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 503 816 for the figurative mark , namely against all the goods in Class 25. The opposition is based on Italian trade mark registration No 302 018 000 019 614 for the figurative mark , in relation to which the opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

The opposition filed on 22/09/2016 was originally based on all the goods in Class 25 of European trade mark application No 15 228 489. However, this trade mark was rejected for all the goods in Class 25 by the Office’s decision of 11/12/2017 rendered in case B 2 771 635.

Following this decision, the opponent requested conversion of his EUTM application No 15 228 489 on which the opposition was based into a national application in Italy. The opponent maintained the opposition and expressed his wish to rely on the national application that resulted from the conversion of the earlier EUTM, namely Italian trade mark registration No 302 018 000 019 614, as the basis of the opposition. On 03/01/2020, the opponent submitted the certificate of registration of the converted trade mark together with its translation into English and re-sent it on 30/03/2020.

According to the Office’s practice, when during opposition proceedings the EUTM application on which the opposition is based ceases to exist (or the list of goods and services is restricted) and a request for conversion is submitted, the proceedings can continue. This is because national trade mark registrations resulting from a conversion of an EUTM application can constitute the basis of the opposition procedure originally made on the basis of that EUTM application (15/07/2008, R 1313/2006‑G, CARDIVA (FIG. MARK) / CARDIMA (FIG. MARK)).

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, inter alia, the following:

Class 25: Dresses.

The contested goods are the following:

Class 25: Beach robes; beach shoes; beachwear; beach hats; beachwear; sandals and beach shoes; tube tops; tops [clothing]; vest tops; short sets [clothing]; trunks; swimming costumes; fitted swimming costumes with bra cups; swimming costumes; gussets for bathing suits [parts of clothing]; swimming costumes; bathing drawers; swimming caps; bath slippers; swimming trunks; bath slippers; bathing suit cover-ups; bathwraps; bath sandals; bathing drawers; swimming costumes; swim wear for gentlemen and ladies; bath shoes; sarongs; beach wraps; blouses; halter tops; chemise tops; caps [headwear]; visors; tee-shirts.

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. These factors are known as the ‘Canon Criteria’ (29/09/1998, C 39/97, Canon, EU:C:1998:442).

The contested beach robes; beach shoes; beachwear; beach hats; beachwear; sandals and beach shoes; tube tops; tops [clothing]; vest tops; short sets [clothing]; trunks; swimming costumes; fitted swimming costumes with bra cups; swimming costumes; swimming costumes; bathing drawers; swimming caps; bath slippers; swimming trunks; bath slippers; bathing suit cover-ups; bathwraps; bath sandals; bathing drawers; swimming costumes; swim wear for gentlemen and ladies; bath shoes; sarongs; beach wraps; blouses; halter tops; chemise tops; caps [headwear]; visors; tee-shirts are various types of clothing, footwear and headgear. All of these goods have, at the very least, the same purpose, and they target the same public and may be distributed through the same channels as the opponent’s dresses. Moreover, they usually originate from the same producers. Therefore, these contested goods are at least similar to the opponent’s goods.

There is also a certain degree of similarity between the contested gussets for bathing suits [parts of clothing] and the opponent’s dresses. A gusset is ‘an inset piece of material used esp. to strengthen or enlarge a garment’ (information extracted from Collins Dictionary on 30/06/2020 at www.collinsdictionary.com/dictionary/english/gusset). Similarity between clothing and gussets, as parts of clothing, was confirmed by the EUIPO’s Board of Appeals, according to which ‘[g]ussets’ are in general made out of textile and sewn into a piece of clothing to strengthen; they enlarge or just add more comfort to the cloth. Regardless who uses the goods in the production process, both sets of goods are meant to satisfy the needs of the end consumer, who will wear a jacket with or without pockets. (15/04/2019, R 1416/2018‑4, Contim / Conti, § 20). In addition, gussets may be sold separately from the ready-made clothing and may be sewn into a piece of clothing directly by the general public (e.g. DIY enthusiasts), so the relevant public for these goods may overlap. They may be produced by the same manufacturers or, at the very least, consumers may expect that they originate from the same manufacturers. For these reasons, at least a low degree of similarity between these contested goods and the opponent’s goods can be established.

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 at least similar to a low or at least similar to an average degree are directed at the public at large. Although some of the contested goods may additionally target the professional public, the opponent’s goods target exclusively the public at large (05/10/2017, T‑337/16, VERSACCINO (fig.) / VERSACE et al., EU:T:2017:692, § 75). As stated by the Court, ‘the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and the product covered by the mark applied for’ that were found to be identical or similar (01/07/2008, T‑328/05, Quartz, EU:T:2008:238, § 23; appeal dismissed 10/07/2009, C‑416/08 P, Quartz, EU:C:2009:450). Therefore, the only overlapping public is the public at large and, therefore, the examination will continue for this public.

The degree of attention of the public is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 signs are figurative, composed of both verbal and figurative elements.

The earlier mark is composed of the depiction of a palm tree against the sun, below which are the words ‘COCOA BEACH’, one above the other, in white standard and non-distinctive characters. These elements are depicted against brown rectangular background.

The contested sign consists of the word ‘cocöa’ in black lower-case letters, next to it a depiction of two cocoa beans, and below these elements the word ‘swimwear’ in black lower-case letters. The stylisation of the verbal elements is standard and non-distinctive.

The words ‘cocöa’ and ‘COCOA’ as such are meaningless in Italian. Nevertheless, on account of their high degree of visual similarity with the Italian word cacao, meaning, inter alia, a reddish-brown, aromatic, bitter powder that is the essential ingredient of chocolate (information extracted from Garzanti Linguistica on 30/06/2020 at www.garzantilinguistica.it/ricerca/?q=cacao), a substantial part of the relevant public will associate them with this meaning. In the contested sign this concept is further reinforced by the figurative element of two cocoa beans, which is located immediately next to the word ‘cocöa’, so the consumers will more easily understand one because of the other (17/04/2008, T‑389/03, Pelican, EU:T:2008:114, § 91). The Opposition Division finds it appropriate to limit the examination of the signs to the non-negligible part of the public that will perceive this concept in both signs. As it is not directly descriptive, allusive or otherwise weak for the relevant goods, the inherent distinctive character of ‘cocöa’ and ‘COCOA’ is considered average.

The words ‘swimwear’ and ‘BEACH’ are meaningless for the relevant public. Therefore, they are of an average degree of distinctiveness.

The signs’ figurative elements, namely the palm tree and cocoa beans, are meaningless in relation to the goods at issue and are of an average degree of distinctiveness. However, according to settled case-law, 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; 19/12/2011, R 233/2011‑4, BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

The earlier mark has no element(s) that can be considered more dominant (eye-catching) than other elements. As regards the contested sign, the word ‘cocöa’ and the figurative element of the cocoa beans are the dominant elements on account of their size and position.

Visually, the signs coincide in the elements ‘COCOA’/‘cocoa’, although these elements differ slightly in their stylisations and that of the contested sign differs in the accent above the penultimate letter (‘cocöa’).

The signs differ in their remaining verbal elements, namely ‘BEACH’ in the earlier mark and ‘swimwear’ in the contested sign. It is noted that the beginning of a sign normally catches and holds the attention of the consumer (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64‑65) and the public is likely to pay less attention to the elements located in a more distant positions. In addition, the contested sign’s element ‘swimwear’ is secondary and has lesser impact on consumers than the coinciding element. Therefore, the relevant public is likely to pay more attention to the verbal elements ‘COCOA’/‘cocoa’ than to these remaining elements.

The signs also differ in their typefaces and figurative elements; however, as noted above, verbal elements normally have a stronger impact than figurative elements.

Overall, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the words ‘COCOA’ and ‘cocöa’, as the accent in the contested sign will have no impact from the relevant public’s perspective. The pronunciation of the earlier mark differs in the sound of the word ‘BEACH’, which has no counterpart in the contested sign.

Consumers tend not to pronounce all elements of the signs, simply to economise on words because they take time to pronounce, especially when they are easily separable from the dominant element of the mark (18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48). Therefore, it is likely that the contested sign’s secondary element ‘swimwear’ will not be pronounced by the relevant public at all. Moreover, purely figurative elements of the signs, including their stylisation, are not subject to a phonetic assessment.

Therefore, the signs are aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public will perceive the same concept in the word ‘COCOA’ of the earlier mark and in the word ‘cocöa’ and the figurative element of two cocoa beans of the contested sign. The earlier mark differs in the concept(s) evoked by its figurative elements, while the verbal element ‘BEACH’ in the earlier mark and ‘swimwear’ in the contested sign evoke no concepts for the relevant public. Therefore, the signs are conceptually similar to a high degree.

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 his 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. Global assessment, other arguments and conclusion

Evaluating 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).

The goods are at least similar to a low degree or at least similar to an average degree. The relevant public is the public at large displaying an average degree of attentiveness. Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The signs are visually similar to an average degree, aurally similar to an above-average degree and conceptually highly similar. The similarities are on account of the verbal elements ‘cocöa’ and ‘COCOA’, which are likely to attract most of the attention of the relevant public. In addition, they will be associated with the same concept, which in the contested sign is further reinforced by the depiction of two cacao beans.

Although the public will likely not overlook certain verbal and/or figurative differences between the signs, a likelihood of confusion covers situations where consumers directly confuse the trade marks themselves, or where consumers make a connection between the conflicting signs and assume that the goods covered are from the same or economically linked undertakings. Therefore, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when average consumers, although aware of the differences between the signs, nevertheless assume, on account of the use of the nearly identical words ‘cocöa’ and ‘COCOA’ for similar goods, that they are derived from the same undertaking or an economically linked undertaking.

Indeed, it is highly conceivable that relevant consumers will perceive the mark applied for as a sub-brand of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on a part of the public (i.e. the part that will see the concept of ‘cacao’ in both signs). Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 302 018 000 019 614. It follows that the contested trade mark must be rejected for all the contested goods.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Liliya YORDANOVA

Jakub MROZOWSKI

Patricia LOPEZ FERNANDEZ DE CORRES

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.