OPPOSITION No B 3 022 350

Naturana Dölker GmbH & Co KG, Hinterweilerstr. 3, 72810 Gomaringen, Germany (opponent), represented by Gleiss Große Schrell und Partner MbB, Leitzstr. 45, 70469 Stuttgart, Germany (professional representative)

a g a i n s t

John Mills Limited, Chiswick Green, 610 Chiswick High Road, W4 5RU London, United Kingdom (applicant).

On 12/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 022 350 is upheld for all the contested goods.

2. European Union trade mark application No 17 278 805 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 17 278 805, ‘STAR BRA’. The opposition is based on, inter alia, German trade mark registration No 986 715, ‘STAR von NATURANA’. 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 986 715, ‘STAR von NATURANA’.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Brassieres.

The contested goods are the following:

Class 25: Articles of clothing; Bras; Brassieres; Underclothing for women; Underclothes; womens' undergarments.

The contested bras; brassieres are identically included in both lists.

The contested articles of clothing include, as a broader category, the opponent’s brassieres as do the contested underclothing for women; underclothes; womens' undergarments. 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 considered to be average.

3. The signs

STAR von NATURANA	STAR BRA
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).

Both marks are word marks featuring the English word ‘STAR’ as their first word, a word with a laudatory connotation not only for English speakers but also for the relevant German public and therefore weak, being indicative of quality (11/05/2010, T‑492/08, Star foods, EU:T:2010:186; 10/10/2012, T-333/11, Star foods, EU:T:2012:536 ). The second and final verbal element of the contested mark ‘BRA’, simply describes the goods. As such, it cannot be excluded that a significant part of the relevant public (women with some knowledge of the English language) will know this word and/or will recognise its descriptive meaning in the context of the particular goods i.e underclothing, particularly given the widespread popularity in Germany of a push-up bra brand which incorporates this English language verbal element. For this part of the public, it is non-distinctive. For the remaining part of the public, it is meaningless and distinctive.

The earlier mark´s second word element ‘von’ is the German preposition used to denote ‘from’ and will be perceived as such as the ensuing verbal element does not form part of a surname. The word ‘NATURANA’ has no meaning for the relevant public (albeit somewhat evocative of the German word for nature ‘NATUR’). Consequently, ‘STAR’ will be perceived as a(n own brand) trade mark which comes from, or is made or produced by a company known as Naturana. As constructed, the ‘von NATURANA’ will be perceived as being subsidiary to the first element ‘STAR’ here, particularly given that consumers generally tend to focus on the beginning of a sign when they encounter 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.

Visually, the signs coincide in their beginning, the term ‘STAR’ which, albeit weak, is the sole element of the contested sign which is capable of indicating origin, and which also functions as a badge of origin in the earlier mark. They differ in the ‘von NATURANA’ of the earlier sign which will be perceived as distinctive but subsidiary information and in the ‘BRA’ of the contested sign which is non-distinctive for part of the public and distinctive for the rest of the public.

Therefore, the signs are visually similar to at least an average degree for at least part of the public.

Aurally, the pronunciation of the signs coincides in the word ‘STAR’, present identically in both signs. The pronunciation differs in the sound of the word ‘BRA’ of the contested sign, which is non-distinctive for a part of the public and otherwise distinctive, and in the words ‘von NATURANA’ which will likely go unpronounced by the relevant public, since their pronunciation requires a certain amount of time and since these words can be simply separated from the first verbal element of the earlier mark (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 41; 06/10/2017, T-139/16, Berg Outdoor, EU:T:2013:68, § 42).

Therefore, the signs are similar to at least an average degree for at least part of the public.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually similar to the extent that they coincide in the concept of STAR.

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 of a weak element in the mark, 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).

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.

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).

Account is also taken of the fact that, when assessing likelihood of confusion in relation to signs that contain several verbal elements, one of which might be seen as a business name i.e indicating the company or designer behind the trade mark, consumers are likely to focus on the element that would be seen as identifying the specific product line, rather than an element which is subsidiary, being preceded by the preposition ‘von’. In these circumstances, ‘STAR’ will be retained as the primary indicator of the commercial origin of the products, in the mind of the consumer.

The goods are identical, the signs are visually and aurally similar to at least an average degree for at least part of the public and they coincide conceptually to the extent that they both feature the element STAR, which plays an independent role in both signs and is positioned at their fore. Therefore, for part of the public the differences between the signs are confined to elements which are non-distinctive for that part, and in any event placed in a secondary position, or elements which will be perceived as subsidiary information in concreto. Furthermore, the contested sign does not contain any word or figurative element which is capable of distancing the signs in a way which would counteract the close impression resulting from the coincidence in ‘STAR’.

Considering all the above and taking into account the principles of interdependence and imperfect recollection, the Opposition Division considers that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR for a significant part of the public under analysis. A likelihood of confusion for this part of the relevant public is sufficient to reject the contested application. Therefore, the opposition succeeds.

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 (23/10/2002, T‑104/01, Fifties, EU: T:2002:262, § 49).

In its observations, the applicant argues that other registrations featuring STAR coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

In its observations, the applicant also argues, by reference to prior registrations, that the earlier trade mark has a low distinctive character given that many trade marks include the element STAR.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include STAR. Under these circumstances, the applicant’s claims must be set aside.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 986 715, ‘STAR von NATURANA’.

It follows that the contested trade mark must be rejected for all the contested goods.

As said earlier right 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).

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

Irena LYUDMILOVA LECHEVA

Keeva DOHERTY

Edith Elisabeth VAN DEN EEDE

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.