OPPOSITION No B 2 807 769

Kik Textilien und Non-Food GmbH, Siemensstr. 21, 59199 Bönen, Germany (opponent), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative)

a g a i n s t

Sabina Mirca Zamboni, Via Navene Vecchia 89, 37018 Malcesine (VR), Italy (applicant), represented by Benedetta Cacialli, Piazza Dei Giudici 2, 50122 Firenze, Italy (professional representative).

On 30/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 807 769 is upheld for all the contested goods, namely:

Class 14: Cases [fitted] for jewels; housings for clocks and watches; paste jewellery [costume jewelry (Am)]; paste jewellery [costume jewelry (Am)]; imitation jewellery ornaments; jewels; ornaments [jewellery, jewelry (Am)]; jewelry findings; jewel cases; presentation boxes for jewelry; jewelry cases not of precious metal; small jewellery boxes, not of precious metal; jewellery, including imitation jewellery and plastic jewellery; leather key fobs; leather jewelry boxes; jewelry boxes; jewellery boxes and watch boxes; metal key fobs; cuff links; tie bars; charity bracelets.

Class 18: Cosmetic cases sold empty; leather purses; briefcases [leather goods]; keycases; luggage tags [leatherware]; travelling sets [leatherware]; boxes made of leather; leather purses; briefcases [leather goods]; briefcases [leather goods]; briefbags; casual bags; handbags; purses; slings for carrying infants; diplomatic bags; roll bags; souvenir bags; all-purpose carrying bags; work bags; multi-purpose purses; hiking bags; travel baggage; shoulder bags; flight bags; shoe bags; garment carriers; garment carriers; evening handbags; weekend bags; shopping bags; sport bags; bags (game -) [hunting accessories]; beach bags; handbags; bags for umbrellas; ladies’ handbags; evening handbags; handbags made of leather; small clutch purses; small bags for men; key bags; tool bags, empty; wheeled bags; briefcases [leather goods]; animal carriers [bags]; saddlebags; leather bags and wallets; cosmetic bags sold empty; purses made of precious metal; handbags, purses and wallets; wrist mounted carryall bags; shopping bags made of skin; sling bags for carrying infants; slings for carrying infants; gentlemen’s handbags; two-wheeled shopping bags; luggage, bags, wallets and other carriers; shopping bags with wheels attached; bags [envelopes, pouches] of leather, for packaging; belt bags and hip bags; card wallets [leatherware]; wallets; cosmetic purses; card cases [notecases]; business card cases; banknote holders; card wallets [leatherware]; credit card cases [wallets]; garment carriers; briefcases and attache cases; backpacks; haversacks; beach bags; trunks [luggage]; clothing for pets; leads for animals; tool pouches, sold empty; umbrellas; bags for umbrellas; bags for umbrellas; umbrella covers; parasols; umbrellas for children; gym bags; briefbags; haversacks; pouches; dog shoes; dog leashes; dog clothing; collars for animals; clothing for pets.

Class 25: Leather clothing; clothing; beachwear; clothing; leather clothing; foulards [clothing articles]; woven clothing; hats; gloves [clothing]; bathwraps; footwear; footwear; suits; underwear.

2. European Union trade mark application No 15 683 923 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

PRELIMINARY REMARK

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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 683 923 for the figurative mark , namely against all the goods in Classes 14, 18 and 25. The opposition is based on, inter alia, German trade mark registration No 30 260 271 for the word mark ‘Janina’. 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.

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 30 260 271.

1. The goods

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

Class 14: Precious metals and their alloys and products made from these materials or coated therewith, namely ornamental art objects, ornaments, tableware (except table cutlery), epergnes, ashtrays, cigar and cigarette cases, cigar and cigarette holders for smoking purposes; jewelry, precious stones; timepieces and chronometric instruments.

Class 18: Leather and imitation leather, goods made of these materials, namely bags and other goods, not adapted to the objects for which they are made, as well as small leather objects, particularly purses, wallets, key holders; trunks and suitcases; umbrellas, parasols and walking sticks.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 14: Cases [fitted] for jewels; housings for clocks and watches; paste jewellery [costume jewelry (Am)]; paste jewellery [costume jewelry (Am)]; imitation jewellery ornaments; jewels; ornaments [jewellery, jewelry (Am)]; jewelry findings; jewel cases; presentation boxes for jewelry; jewelry cases not of precious metal; small jewellery boxes, not of precious metal; jewellery, including imitation jewellery and plastic jewellery; leather key fobs; leather jewelry boxes; jewelry boxes; jewellery boxes and watch boxes; metal key fobs; cuff links; tie bars; charity bracelets.

Class 18: Cosmetic cases sold empty; leather purses; briefcases [leather goods]; keycases; luggage tags [leatherware]; travelling sets [leatherware]; boxes made of leather; leather purses; briefcases [leather goods]; briefcases [leather goods]; briefbags; casual bags; handbags; purses; slings for carrying infants; diplomatic bags; roll bags; souvenir bags; all-purpose carrying bags; work bags; multi-purpose purses; hiking bags; travel baggage; shoulder bags; flight bags; shoe bags; garment carriers; garment carriers; evening handbags; weekend bags; shopping bags; sport bags; bags (game -) [hunting accessories]; beach bags; handbags; bags for umbrellas; ladies’ handbags; evening handbags; handbags made of leather; small clutch purses; small bags for men; key bags; tool bags, empty; wheeled bags; briefcases [leather goods]; animal carriers [bags]; saddlebags; leather bags and wallets; cosmetic bags sold empty; purses made of precious metal; handbags, purses and wallets; wrist mounted carryall bags; shopping bags made of skin; sling bags for carrying infants; slings for carrying infants; gentlemen’s handbags; two-wheeled shopping bags; luggage, bags, wallets and other carriers; shopping bags with wheels attached; bags [envelopes, pouches] of leather, for packaging; belt bags and hip bags; card wallets [leatherware]; wallets; cosmetic purses; card cases [notecases]; business card cases; banknote holders; card wallets [leatherware]; credit card cases [wallets]; garment carriers; briefcases and attache cases; backpacks; haversacks; beach bags; trunks [luggage]; clothing for pets; leads for animals; tool pouches, sold empty; umbrellas; bags for umbrellas; bags for umbrellas; umbrella covers; parasols; umbrellas for children; gym bags; briefbags; haversacks; pouches; dog shoes; dog leashes; dog clothing; collars for animals; clothing for pets.

Class 25: Leather clothing; clothing; beachwear; clothing; leather clothing; foulards [clothing articles]; woven clothing; hats; gloves [clothing]; bathwraps; footwear; footwear; suits; underwear.

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

The term ‘namely’, used in Classes 14 and 18 to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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

Jewels; ornaments [jewellery, jewelry (Am)]; jewellery, including imitation jewellery and plastic jewellery are identically contained in both lists of goods (including synonyms).

The contested paste jewellery [costume jewelry (Am)] (listed twice); imitation jewellery ornaments; cuff links; tie bars; charity bracelets are included in the broad category of, or overlap with, the opponent’s jewelry. Therefore, they are identical.

The contested cases [fitted] for jewels; jewelry findings; jewel cases; presentation boxes for jewelry; jewelry cases not of precious metal; small jewellery boxes, not of precious metal; leather jewelry boxes; jewelry boxes (listed twice) are similar to the opponent’s jewelry, as they can have the same distribution channels and target the same end user. They can also be produced by the same undertakings and are, furthermore, complementary (they are often even sold together).

The contested housings for clocks and watches; watch boxes are similar to the opponent’s timepieces and chronometric instruments, as they target the same end users, are complementary to each other and can be produced by the same undertakings.

The contested leather key fobs; metal key fobs refer to various items carried on a key chain/ring either as a decoration or for security purposes. As such, they are included in the broad category of, or overlap with, the opponent’s ornaments (defined as ‘decoration added to embellish something’, information extracted from Oxford Dictionaries on 30/08/2018 at https://en.oxforddictionaries.com/definition/ornament). Therefore, they are identical.

Contested goods in Class 18

The contested cosmetic cases sold empty; briefcases [leather goods] (listed several times); briefbags (listed twice); casual bags; handbags (listed several times); diplomatic bags; roll bags; souvenir bags; all-purpose carrying bags; work bags; hiking bags; shoulder bags; flight bags; evening handbags (listed twice); weekend bags; shopping bags; sport bags; bags (game -) [hunting accessories]; beach bags (listed twice); ladies’ handbags; handbags made of leather; small bags for men; wheeled bags; saddlebags; leather bags; cosmetic bags sold empty; wrist mounted carryall bags; shopping bags made of skin; gentlemen’s handbags; two-wheeled shopping bags; bags; shopping bags with wheels attached; bags [envelopes, pouches] of leather, for packaging; belt bags and hip bags; briefcases and attache cases; backpacks; haversacks (listed twice); gym bags; pouches are included in the broad category of, or overlap with, the opponent’s goods made of these materials (leather and imitation leather), namely bags, not adapted to the objects for which they are made. Therefore, they are identical.

The contested slings for carrying infants (listed several times with slightly different wording); shoe bags; garment carriers (listed several times); bags for umbrellas (listed several times); purses made of precious metal; key bags; tool bags, empty; animal carriers [bags]; tool pouches, sold empty; umbrella covers are similar to the opponent’s goods made of these materials (leather and imitation leather), namely bags, not adapted to the objects for which they are made. They have the same purpose and target the same end users. They can also be made by the same undertakings.

The contested travelling sets [leatherware]; boxes made of leather; travel baggage; luggage; trunks [luggage] are included in the broad category of, or overlap with, the opponent’s trunks and suitcases. Therefore, they are identical.

The contested other carriers (other than luggage, bags, wallets) can refer to any ‘thing that carries something’ apart from luggage, bags and wallets. The opponent’s goods made of these materials (leather and imitation leather), namely bags, not adapted to the objects for which they are made are also carriers. They have the same purpose, target the same end users and can have other criteria in common, such as distribution channels and producers. Therefore, they are similar.

The contested umbrellas; parasols; umbrellas for children are either contained in both lists of goods (the first two) or included in the broad category of the opponent’s umbrellas. Therefore, they are identical.

Before the rest of the applicants’ goods in Class 18 are compared, a clarification regarding the natural meaning of the opponent’s small leather objects, particularly purses, wallets, key holders is required. According to the Office’s Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the term goods made of leather does not provide a clear indication of the goods that are covered, as it states only what the goods are made of, and not what they are. This applies by analogy to the term small leather objects, which merely adds a reference to their size. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capability and know-how to be produced and/or used, and may target different consumers, be sold through different sales channels and therefore relate to different market sectors.

The term ‘particularly’, 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 (on the use of ‘in particular’, which has the same function as ‘particularly’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107). In the present case, these examples expressly identify the goods of those covered by the vague term, thus enabling the Opposition Division to carry out a comparison. Therefore, since the contested leather purses (listed twice); keycases; purses (listed twice); multi-purpose purses; small clutch purses; leather wallets; wallets (listed several times); card wallets [leatherware] (listed twice); cosmetic purses; credit card cases [wallets] are either identically contained in both lists (including synonyms) or included in the broader categories of the opponent’s purses, wallets, key holders, they are identical.

When comparing the remaining contested goods, namely luggage tags [leatherware]; card cases [notecases]; business card cases; banknote holders; clothing for pets (listed twice); leads for animals; dog shoes; dog leashes; dog clothing; collars for animals and the opponent’s vague term small leather objects, it cannot be assumed, without further examples or an express limitation by the opponent clarifying the term, that they have the same purpose, that their methods of use are the same, that they have the same distribution channels or that they are in competition or complementary. However, their nature can be considered the same, as the contested goods are or may be of leather (or an imitation thereof), and it is reasonable to assume that the goods may be produced by the same companies, given that the required know-how and machinery (i.e. to cut leather) may also be the same. Therefore, these goods can be found similar only to a low degree.

Contested goods in Class 25

The contested leather clothing (listed twice); clothing (listed twice); beachwear; foulards [clothing articles]; woven clothing; hats; gloves [clothing]; bathwraps; footwear (listed twice); suits; underwear are identical to the opponent’s clothing, footwear, headgear because they are identically contained in both lists (e.g. clothing) or the contested ones are included in the opponent’s broader categories of goods (e.g. hats included in the category of 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 or similar (to various degrees) are directed at the public at large and also at business customers with specific professional knowledge or expertise.

Some of the relevant goods are also luxury goods and, in its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

The degree of attention may therefore vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Janina
Earlier trade mark	Contested sign

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).

The earlier mark is a word mark, consisting of the single element ‘Janina’, which will be perceived by the relevant public as a female first name. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters, or a combination thereof, is immaterial.

The contested sign is a figurative mark consisting of two elements: a depiction in red of two basic figures resembling a little boy and a little girl standing close to each other and joined by one of their hands, and, below it, the element ‘1anina’, a combination of the Arabic numeral ‘1’ followed by the sequence of letters ‘anina’ written in a stylised black typeface using lower case letters resembling children’s handwriting.

The figurative element of the contested sign will be associated with ‘children’. Bearing in mind that some of the relevant goods are children-related goods, this element is weak for these goods (e.g. slings for carrying infants and umbrellas for children), and distinctive for the remainder (e.g. diplomatic bags, wallets or clothing for pets).

Although the element ‘1anina’ may admit different understandings, it is likely that the relevant public will assimilate it to a word they know. In this regard, it cannot be excluded that part of the relevant public will perceive ‘1anina’ as ‘Janina’ due to their similarity. This perception would be reinforced by the typeface of the contested sign resembling children’s handwriting, in which misspellings and imperfections are common. Consequently, for the purposes of the comparison, the Opposition Division considers it appropriate to focus on the part of the public that will perceive both elements, that is, ‘Janina’ in the earlier mark and ‘1anina’ in the contested sign, in the aforementioned way. As both will be perceived as the same given name, they are considered equally distinctive.

Neither of the elements of the contested sign can be considered clearly more dominant than the other.

When signs consist of both verbal and figurative components, 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).

Visually, the signs coincide in their verbal elements ‘JANINA’ and differ in the stylisation of the letters, their colours and the (less distinctive for some goods) figurative element of the contested sign.

Therefore, the signs are visually similar to at least an average degree.

Aurally, following the same reasoning given above, that is, the perception of ‘1anina’ as ‘Janina’, the relevant public will pronounce both verbal elements in the same way.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the ‘female first name Janina’, and the degree of distinctiveness of the additional concept conveyed by the figurative element in the contested sign will vary depending on the relevant goods, the signs are found conceptually similar to at least 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.

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. Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the relevant public might make between the two marks and on the degree of similarity between the signs and the goods (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sàbel, EU:C:1997:528, § 22).

In the present case, the goods are partly identical and partly similar to various degrees. The signs were found to be visually and conceptually similar to at least an average degree, and aurally identical. The earlier mark enjoys an average degree of distinctiveness and the degree of attention varies from average to higher than average.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods 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 the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 260 271. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier German trade mark registration No 30 260 271 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

María del Carmen COBOS PALOMO

Alicia BLAYA ALGARRA

Vita VORONECKAITE

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.