OPPOSITION No B 2 779 448

Valentino S.p.A., Via Turati, 16/18, 20121 Milan, Italy (opponent), represented by Jacobacci & Partners S.P.A., Via Senato, 8, 20121 Milan (MI), Italy (professional representative)

a g a i n s t

Oro Liquido Di Valentina S.L., C/ Mariano Girada nº14, 1ºizq., 30005 Murcia, Spain (applicant), represented by Almudena Abellán Pérez, Plaza de la Fuensanta, nº2, 8ºC. Edificio Hispania, 30008 Murcia, Spain (professional representative).

On 23/10/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 779 448 is upheld for all the contested goods.

2. European Union trade mark application No 15 572 407 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 572 407 for the figurative mark , namely against all the goods in Class 3. The opposition is based on the following earlier marks:

• European Union trade mark registration No 10 945 236 for the figurative mark , registered for goods in Class 3;

• European Union trade mark registration No 12 051 322 for the figurative mark , registered for goods in Class 3;

• European Union trade mark registration No 9 377 375 for the word mark ‘VALENTINA VALENTINO’, registered for goods in Class 3;

• European Union trade mark registration No 12 431 276 for the figurative mark , registered for goods in Class 3;

• European Union trade mark registration No 13 223 193 for the figurative mark , registered for goods in Class 3.

• European union trade mark registration No 10 152 866 for the figurative mark , registered for goods in Class 3.

The opponent invoked Article 8(1)(a) and (b) EUTMR.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

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 10 945 236.

1. The goods

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

Class 3: Cosmetics, including night and day creams; preparations for the cleaning and care of the face and body, bath foam; shaving foam, aftershave; foundation cream; nail polish; deodorants for men and women; hand and body soap; shampoos and hair rinses; hair spray; dentifrices; fragrances, namely perfume, eau de Cologne, and essential oils for personal use for men and women.

The contested goods are the following:

Class 3: Cosmetics; make-up; perfume; essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations; cosmetic creams; shampoos; soaps and gels.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, also used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Cosmetics; perfume; shampoo are identically contained in both lists of goods.

The contested make-up; toiletries; cosmetic creams are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested essential oils and aromatic extracts include, as a broader category, or overlap with the opponent’s essential oils for personal use for men and women. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods

The contested cleaning preparations include, as a broader category, the opponent’s hand soap. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested fragrancing preparations include, as a broader category, the opponent’s perfume. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested soaps and gels include, as broader categories, or overlap with the opponent’s hand and body soap. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 at the public at large

The degree of attention is average.

3. The signs

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).

Both trade marks are figurative signs containing verbal and figurative elements. In such cases, in principle, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The earlier mark consists of a depiction of white roses on a pink background. A black square appears in the centre of the mark, which contains the word ‘VALENTINA’ in standard white upper case letters. The flowers have an average degree of distinctiveness in relation to the vast majority of the relevant goods because they have no meaning in relation to them. However, the flowers are non-distinctive in relation to fragrances, namely perfume, eau de Cologne, and essential oils for personal use for men and women, as they could be perceived as describing the scent of these goods.

The distinctiveness of the element ‘VALENTINA’ will be discussed below.

The contested sign is a figurative mark consisting of stylised lines in a discrete white circle on the left side of a black background; these lines might be perceived by part of the public as letters (the letters ‘v’, ‘a’ or ‘n’); however, this figurative element will probably be perceived as ornamental. On the right is the verbal element ‘ORO DI VALENTINA’ in white upper case letters. The element ‘ORO DI’ is above the element ‘VALENTINA’.

There is no element in the signs that can be considered more dominant than other elements.

The word ‘ORO’ in the contested sign is meaningless for some parts of the public (e.g. the Bulgarian-, English- and German-speaking publics). However, it is meaningful for other parts of the public, for instance the Lithuanian-speaking part of the public, for which ‘oro’ refers to ‘weather’, the Portuguese-speaking part of the public, for which ‘oro’ means ‘to pray, to speak, to deliver a speech’, or the Swedish-speaking part of the public, for which ‘oro’ means ‘worry’ or ‘anxiety’. In addition, an important part of the public whose language has Latin roots will perceive ‘oro’ as meaning gold, either because it is the same as the equivalent word in that language (e.g. in Spanish and Italian) or because it is highly similar to the equivalent word (e.g. ‘or’ in French or ‘ouro’ in Portuguese). Regardless of whether the word is meaningless or has one of the meanings mentioned above, it has an average degree of distinctiveness for the relevant public, given that it has no meaning in relation to the contested goods.

The word ‘DI’ will be perceived by part of the public as the equivalent of the English word ‘of’, in particular by the Italian-speaking part of the public, while, for another part of the public, it is meaningless. As a whole, ‘ORO DI’ has an average degree of distinctiveness.

As regards the coinciding element in the marks, namely ‘VALENTINA’, the public will perceive it as a female given name. It is observed that, according to case-law, it is appropriate to take account of the fact that the name concerned is either unusual or, on the contrary, very common, which is likely to have an effect on its distinctive character (24/06/2010, C‑51/09 P, Barbara Becker, EU:C:2010:368, § 36). In the present case, the name ‘VALENTINA’ is common in several countries, in particular in Italy, but is unusual in many others, including Bulgaria, the United Kingdom, France, etc.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

For the reasons given above, the Opposition Division will focus the comparison of the signs on countries where the name ‘VALENTINA’ is not common, for example Bulgaria, the United Kingdom and France. In those countries, ‘VALENTINA’ has an average degree of distinctiveness.

In addition, it cannot be denied that a residual part of the public will perceive ‘VALENTINA’ as a fanciful element. For this part of the public, ‘VALENTINA’ also has an average degree of distinctiveness, in particular because it has no meaning in relation to the relevant goods.

It should be kept in mind that it follows from the cited case-law that the marks containing or reproducing an element of the other must be considered, at least to that extent, similar (03/07/2003, T‑129/01, Budmen, EU:T:2003:184, § 47-50; 04/11/2003, T‑85/02, Castillo, EU:T:2003:288, § 40; 18/02/2004, T‑10/03, Conforflex, EU:T:2004:46, § 59 et seq.; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 46 et seq.; 06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 54-57; 04/05/2005, T‑359/02, Star TV, EU:T:2005:156; 11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 49 et seq.; 25/05/2005, T‑352/02, PC Works, EU:T:2005:176, § 34 et seq.; 25/05/2005, T‑288/03, Teletech Global Ventures, EU:T:2005:177, § 86 et seq.; 22/03/2007, T‑322/05, Terranus, EU:T:2007:94, § 35 et seq.; 08/09/2010, T‑152/08, Scorpionexo, EU:T:2010:357, § 66 et seq.; 08/09/2010, T‑369/09, Porto Alegre, EU:T:2010:362, § 26 et seq.; 20/09/2011, T‑1/09, Meta, EU:T:2011:495; 28/09/2011, T‑356/10, Victory Red, EU:T:2011:543, § 26 et seq.; 23/05/2007, T‑342/05, Cor, EU:T:2007:152; 10/11/2011, T‑313/10, Ayuuri Natural, EU:T:2011:653; 15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 55 et seq.). The Opposition Division cannot ignore such an extensive precedent in case-law.

Visually, the signs coincide in the word ‘VALENTINA’ and in the fact that ‘VALENTINA’ is in white upper case letters on a black background.

The signs differ in their figurative elements and in the additional word elements of the contested sign, namely ‘ORO DI’.

Bearing all this in mind, including the fact that verbal elements have more significance than figurative elements, the Opposition Division considers that, despite the abovementioned differences, the fact that the sole verbal element of the earlier mark is completely included as an independent element in the contested sign (this independence being enhanced by the fact that, in the contested mark, ‘VALENTINA’ is written below ‘ORO DI’ and is the only element on that line) is sufficient to conclude that the signs have an average degree of visual similarity.

Aurally, the signs coincide in the sound of the word ‘VALENTINA’, while they differ in the additional elements ‘ORO DI’ in the contested sign. The Opposition Division considers that, even if a residual part of the public might perceive letters in the contested sign’s figurative element, they are barely noticeable and to that extent will not be pronounced.

The signs are therefore aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are similar to a high degree due to the identical concept conveyed by the female given name ‘VALENTINA’ (for the vast majority of the public), whereas the flowers depicted in the earlier mark (which are moreover non-distinctive for some of the goods) and the additional word elements of the contested sign (for only a residual part of the public) slightly balance this conceptual similarity.

For the residual part of the public that will perceive the element ‘VALENTINA’ as being fanciful, the signs are not conceptually similar.

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. 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, despite the presence the presence of a non-distinctive element in the mark (for part of the goods), as stated above in section c) of this decision.

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 contested goods are identical to the opponent’s goods. The signs are visually similar to an average degree and aurally and conceptually similar to a high degree (for a vast majority of the public, while the signs are not conceptually similar for a residual part).

Furthermore, account is taken of the fact that 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).

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested sign denotes a new brand line of goods provided under the opponent’s mark, in particular bearing in mind that the earlier mark’s verbal element is entirely included in the contested sign as an independent and distinctive element.

Moreover, it is consistent case-law that when the goods covered by the marks at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53).

Considering all the above, there is a likelihood of confusion on the part of the public for which the use of the given name ‘VALENTINA’ is not widespread, for example for the Bulgarian-, French- and the English-speaking parts of the public, because, for these parts of the public, this female given name will have an average degree of distinctiveness. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 945 236. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 10 945 236 for the figurative mark 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).

Finally, 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(1)(a).

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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Pedro JURADO MONTEJANO

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.