OPPOSITION No B 3 058 044

Nina Footwear Corp., 200 Park Avenue South, 10003 New York, United States of America (opponent), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158 Milano, Italy (professional representative)

a g a i n s t

Nina Collection LLC, 7575 N San Fernando RD, 91505 Burbank, United States of America (applicant), represented by Riccardo Ciullo, Carrer de Rosselló, 362, 4-3, 08025 Barcelona, Spain (professional representative).

On 30/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 044 is partially upheld, namely for the following contested goods:

Class 9: Cell phone cases.

Class 18: Handbags and totes.

Class 25: Apparel, footwear.

Class 28: Toys.

2. European Union trade mark application No 17 868 017 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 868 017. The opposition is based on European Union trade mark registrations No 9 561 085 for the figurative mark , No 586 438 for the figurative mark and No 4 537 544 for the word mark ‘NINA’. 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.

a) The goods and services

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

EUTM registration No 9 561 085 (earlier mark 1)

Class 18: Handbags.

Class 25: Camisoles, robes, loungewear, veils, garters, sashes, footwear; bridal headwear, namely, bridal headpieces and headdresses.

Class 26: Hair ornaments, hair bands, barrettes, decorative bobby pins, decorative hair pins.

EUTM registration No 586 438 (earlier mark 2)

Class 18: Bags and handbags, excluding bags for photographic cameras, camcorders, binoculars, mobile telephones, travelling bags, sports bags, leisure bags, as well as spectacle cases.

Class 25: Footwear.

EUTM registration No 4 537 544 (earlier mark 3)

Class 25: Footwear, shoes, socks and athletic footwear.

Class 28: Footwear, shoes, socks and athletic footwear being accessories for dolls.

Class 35: Retail sales of footwear; wholesale sales of footwear; mail order sales of footwear; online sales of footwear.

The contested goods are the following:

Class 9: Cell phone cases.

Class 14: Jewelry.

Class 16: Books, sticker books, printed materials, art materials.

Class 18: Handbags and totes, umbrellas.

Class 20: Pillows.

Class 24: Blankets, sheet sets, bedding.

Class 25: Apparel, footwear.

Class 28: Toys.

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 9

The contested cell phone cases are different versions of specialised bags and containers designed for special carrying and protection purposes. These goods are at least similar to a low degree to the opponent’s hand bags of the earlier mark 1 since they have the same purposes and methods of use, i.e. transport and protection of belongings. The goods in question may have the same manufacturers and target the same consumers.

Contested goods in Class 14

In its observations, the opponent argues that the contested jewelry is similar to the opponent’s clothing goods. The opponent’s camisoles, robes, loungewear, veils, garters and sashes of the earlier mark 1 are articles, usually of cloth, designed to cover or protect the body. The contested jewelry consists of small decorative items worn for personal adornment, which are usually made of stones, jewels, gold, silver or other metal. Their nature and main purpose are different. They are not usually made by the same manufacturers. Even though some clothing designers nowadays also sell fashion accessories such as jewellery under their marks, this is not the norm; it tends to apply only to (commercially) successful designers. Moreover, the goods are neither in competition nor complementary. Therefore, contrary to the opponent’s opinion, the contested jewelry is dissimilar to the opponent´s camisoles, robes, loungewear, veils, garters and sashes.

The opponent’s hair ornaments, hair bands, barrettes, decorative bobby pins, decorative hair pins of the earlier mark 1 are articles for the hair, and are toiletry articles sold in shops selling cosmetics and toiletry articles. These goods and the contested jewelry have a different nature, distribution channels and producers. Moreover, they are neither complementary nor in competition. Even though they may have the same purpose, namely adorning, this is not enough to make them similar. Therefore, they are dissimilar.

The contested jewelry is even further apart from the remaining goods of the opponent. Thus, they are also dissimilar to the remaining opponent’s goods or services.

Contested goods in Classes 16, 20 and 24

The contested books, sticker books, printed materials, art materials in Class 16 are printed goods containing various contents, or goods which are utilized by an artist to create a work of art. The contested pillows in Class 20 are articles which provide a support of the body at rest for comfort, therapy, or decoration. The contested blankets, sheet sets, bedding in Class 24 are home textile products for covering the body to keep it warm when sleeping or resting, or for laying above mattresses for hygiene and protection.

The abovementioned contested goods are not similar to any of the opponent´s goods and services in Classes 18, 25, 26, 28 and 35 because their nature and main purposes are different, they do not have the same distribution channels, differ in their producers and are neither in competition, nor complementary.

In particular, the fact that some of the contested goods (e.g. those in Class 24) and some of the opponent’s goods (e.g. some clothing articles in Class 25) are often made of textile material is not enough to justify a finding of similarity. These goods serve completely different purposes (for household purposes and interior decoration vs. to be worn by people, for protection and/or fashion) and their methods of use are different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, they are dissimilar.

Contested goods in Class 18

The contested handbags are identically contained in the list of goods of the opponent’s earlier mark 1, and the contested totes (a large hand-bag or shoulder-bag) are included in the broad category of, or overlap with, the opponent’s handbags of earlier mark 1 and are, therefore, also identical.

The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod. They are dissimilar to any of the opponent´s goods and services because their nature and main purpose are different, they do not have the same distribution channels, differ in their producers and are neither in competition, nor complementary.

Contested goods in Class 25

Footwear is identically contained in all lists of goods.

The contested apparel includes, as a broader category the opponent’s camisoles, robes, loungewear, veils, garters and sashes of earlier mark 1. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 28

The contested toys are articles that usually children play with, for example dolls or model cars etc. The opponent’s footwear, shoes, socks and athletic footwear being accessories for dolls in Class 28 of earlier mark 3 and the contested toys may have the same nature, same distribution channels and same purpose, namely being playthings for kids. They are usually produced by the same undertakings and may target the same consumers. Therefore they are highly similar.

b) 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 different degrees) are directed at the public at large. The degree of attention is considered to be average.

c) The signs

Earlier mark 1:
Earlier mark 2:
Earlier mark 3: NINA
Earlier trade marks	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 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.

The earlier mark 1 is a figurative mark consisting of the verbal element ‘NINA’ in stylized handwritten black script. The earlier mark 2 is a figurative mark consisting of a crown in a frame positioned above the verbal element ‘NINA’ in stylized handwritten white script on a black background. The earlier mark 3 is a word mark consisting of the verbal element ‘NINA’. The figurative elements of earlier mark 2, depicting a crown and frames, have a low degree of distinctiveness, as a crown is commonly used as a symbol of luxury, prestige and high quality, and the frames have a purely decorative nature.

The contested sign is a figurative mark consisting of the verbal elements ‘NINA COLLECTION’ in stylized handwritten black script, positioned on a strip which has white and grey vertical lines, and a depiction of a cat head looking from the top of the strip. The figurative elements of the contested sign, as a whole, have an average degree of distinctiveness since they are not clearly related to the relevant goods.

The coinciding verbal element ‘NINA’ will be perceived as a female given name by the majority of the public, and it has an average degree of distinctiveness since it has no connection with the characteristics of the relevant goods for this part of the public.

The verbal element ‘COLLECTION’ of the contested sign is an English and French word meaning ‘a group of similar things that you have deliberately acquired, usually over a period of time’, which can be used to designate a selection of goods that have some common specifications. Furthermore, it is very close to the equivalent words in some of the remaining official languages in the relevant territory, for instance ‘colección’ in Spanish and ‘collezione’ in Italian; therefore, it will be understood by some other parts of the public. Bearing in mind that the relevant goods may be offered as a collection, the element ‘COLLECTION’ is weak for the part of the public that understands its meaning.

Since the verbal element ‘COLLECTION’ of the contested sign is weak for the part of the public that understands its meaning, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The earlier mark 2 and the contested sign have no element that could be considered clearly more dominant than other elements.

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).

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 the verbal element ‘NINA’. However, they differ in the figurative elements of earlier mark 1, earlier mark 2 and the contested sign, and in the verbal element ‘COLLECTION’ of the contested sign, which is weak for the public under analysis.

Bearing in mind that consumers generally tend to focus on the beginning of a sign and the verbal components of the signs usually have a stronger impact on consumers, the contested sign is visually similar to an average degree to earlier mark 1 and earlier mark 3 and visually similar to a below average degree to earlier mark 2.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‛NINA’, present identically in both signs. The pronunciation differs in the sound of the verbal element ‘COLLECTION’ of the contested mark, which is weak for the public under analysis.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. All signs have the verbal element ‘NINA’ which will be perceived as a female given name, but the contested sign and earlier mark 2 have some figurative elements which convey different concepts. Furthermore, the contested sign also contains the verbal element ‘COLLECTION’ which is weak and has no counterpart in the earlier marks.

Therefore, the contested sign is conceptually similar to an average degree to earlier mark 1 and earlier mark 3. However, since the figurative elements add another concept to earlier mark 2 despite the fact that they are weak, the contested sign is conceptually similar to a below average degree to earlier mark 2.

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

d) Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of all the earlier marks must be seen as normal, despite the presence of a/some weak elements in the marks, as stated above in section c) of this decision.

e) 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).

In the present case, the goods and services are partially identical, partially similar to varying degrees and partially dissimilar. The degree of attention is average and the inherent distinctiveness of the earlier marks is normal.

The signs are visually and conceptually at least similar to a below average degree and aurally similar to a high degree. The differences between the signs are not sufficient to overcome the similarities between them, especially taking into account that consumers tend to focus on the beginning of a sign, have to rely on their imperfect recollection of trade marks, and the verbal components of the signs usually have a stronger impact on the consumers.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade marks.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Boyana NAYDENOVA

Ali KUÇUKŞAHİN

Martin INGESSON

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.