OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION of the First Board of Appeal of 3 December 2009

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) The Boards of Appeal In Case R 389/ DECISION of the First Board of Appeal of 3 December 2009 Urho Viljanmaa Oy Jokipiintie 127 FIN Jokipii Finland Applicant / Appellant represented by BERGGREN OY AB, Antinkatu 3 C, FIN-00100, Helsinki, Finland v DESCAMPS, Société par Actions Simplifiée 20, rue d'athènes F Paris cedex 09 France Opponent / Respondent represented by CABINET FLECHNER, 22, avenue de Friedland, F-75008, Paris, France APPEAL relating to Opposition Proceedings No B (Community trade mark application No ) THE FIRST BOARD OF APPEAL composed of Th. Margellos (Chairperson), C. Rusconi (Rapporteur) and Ph. von Kapff (Member) Registrar: J. Pinkowski gives the following Language of the case: English

2 2 Decision Summary of the facts 1 On 5 January 2007 Urho Viljanmaa Oy ( the applicant ) applied to register the word mark JALAS in respect of the following goods being at issue in these proceedings (hereinafter, the contested goods ): Class 25 Clothing, footwear, headgear. 2 The application was published on 2 July 2007 and on 2 October 2007 Descamps SAS ( the opponent ) filed an opposition against it on grounds of likelihood of confusion (within the meaning of Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark ( CTMR ) (OJ L 78, 24 March 2009, p. 1) codified version of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ EC 1994 No L 11, p. 1; OJ OHIM 1/95, p. 52) with his figurative mark JALLA, as reproduced hereunder registered in France under No on 11 April The opponent supplied a photocopy of the certificate of registration and an English translation thereof. It translated the goods in class 25, which read in French as Vetements, notamment peignoirs de bain, vestes de plage, robes de chambre, gants de toilette, bavettes as Class 25 Clothing. 3 By decision dated 5 February 2009 ( the contested decision ), the Opposition Division upheld the opposition and rejected the CTM application for the contested goods on grounds of likelihood of confusion with the earlier mark. The Opposition Division considered, firstly, that the opposition was based on the following goods Clothing and that the contested goods were identical (as regards clothing ) and very similar (as regards footwear and headgear ) to those covered by the earlier mark. It found, secondly, the marks visually similar to a medium degree and phonetically very similar or identical and concluded that use of the later mark could cause confusion on the French market place.

3 3 4 The applicant appealed the decision on 2 April 2009 and submitted the grounds on 5 June No revision pursuant to Article 62 CTMR was granted. The opponent submitted no observations. Grounds of appeal 5 The applicant requests the Board to overturn the contested decision and to allow the CTM application to proceed in respect of the contested goods. The request is based on the following grounds of appeal: (a) The contested goods footwear and headgear are not similar to the earlier mark s clothing: these items are sold in different parts of department stores; (b) The contested mark is not similar, visually, to the opponent s mark because the word elements are different and one of them is figurative; (c) There are phonetic differences as well because JALAS ends with an s which is sometimes pronounced in French words (hélas, autobus); (d) There are conceptual differences as well: Jalla means hurry up in Arabic and will be understood by the French population, which hosts a large Arab population; Mr Sarkozy (President of France) himself pointed out the importance of the Arabic language in his country in a recent interview to a Belgian newspaper. Reasons 6 The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It is, therefore, admissible. The appeal, however, is unfounded. The applicant s mark, if it is used, is likely to cause confusion in France with the earlier mark. Preliminary remark 7 The opponent declared, upon filing the opposition, that its earlier mark was registered for Clothing and the Opposition Division based the comparison of the goods on that information. 8 This information, however, is only partially correct. According to the certificate of registration, that mark is in fact protected for Clothing articles, in particular bathroom housecoats, beach dresses, dressing gowns, washcloths, gags. 9 These are, therefore, the goods that the opponent should have mentioned in page 2 of its notice of opposition. The relevant public and the similarity of the goods

4 4 10 Since the earlier mark is protected in France for clothing articles, in particular bathroom clothing and beach wear, the likelihood of confusion should be measured against the average buyer of these goods in that country. 11 The Opposition Division found that the conflicting goods were identical as regards clothing. This finding was not based on the correct list of goods, as it has just been seen, and must be accordingly reasoned more thoroughly. 12 The applicant s clothing means clothes and includes, according to the meaning of this word in English, any covering for the person. The opponent s goods are also clothes, in particular for special uses. Since the genus includes the species, there may be said to be identity. 13 Where the applicants clothes had been confined to a species (for example, outdoor clothes), there would be similarity, if not identity, with the goods of the opponents. 14 The Opposition Division s findings as regard the applicant s footwear and headgear are correct. These categories are similar to clothing : after all, footwear covers the feet and headgear covers the head. Therefore, the purpose of these items is the same (covering the person). 15 The applicant s view that they are not similar because they are sold in different areas of department stores is partial because it forgets the nature, the purpose, the complementarity and the manner of using the goods: these are also important aspects to consider when assessing similarity. On all these accounts, footwear and headgear are very close to garments. 16 The Board concludes that the applicant s goods are, at least, similar to those of the opponent. Similarity of the marks and likelihood of confusion 17 The similarity of the marks must be assessed from the viewpoint of the targeted consumers, who are French. 18 The visual and aural similarity of JALAS and JALLA is manifest. The two words look foreign, have the same beginning and share nearly all the letters. 19 The differences are of a minor character. The font of JALLA appears as an ordinary hand-written style and is not particularly striking. The later mark, registered as a word mark, could perfectly be used in trade in the same script. 20 The lack of an L and the addition of an S do not represent substantial changes. 21 It is aurally that the marks resemble each other most. French pronunciation is of course relevant. JALLA sounds like zha-la or zhal-la whereas JALAS sounds like zha-las or zha-la. (using the chart of pronunciation of the Chambers English Dictionary).

5 5 22 In French pronunciation, LL sounds very much like L and the final S is seldom uttered. French consumers often pronounce foreign words or fanciful terms in accordance with French rules of pronunciation. A word like JALAS could perfectly be pronounced as if it were a French word, i.e. zha-la. Words where the final S is uttered, like autobus or, more to the point, hélas (pronounced ā-las ) are exceptions. The rule is that it is not uttered, like in cabas, tas, là-bas, frimas, tracas, chas, pas, cadenas, fracas, bas, fatras, cas, lilas, trépas, las or gagas (plural form of gaga ). 23 The conceptual considerations made by the applicant are partly incorrect and partly irrelevant. It is incorrect that JALLA would be perceived as the French transliteration of the Arabic term ياللا. This term sounds yal la and its French rendering could be yalla, ialla or hialla, certainly not jalla. 24 In any case, the Arabic meaning of the marks is irrelevant since this language is, as even Mr Sarkozy would have to admit, not (yet) familiar to the majority of ordinary French buyers of clothing articles. Costs 25 The applicant, being the losing party in these appeal proceedings, shall be ordered to bear the opponent s representation costs, namely EUR 550 (Article 85(1) CTMR).

6 6 Order On those grounds, THE BOARD hereby: 1. Dismisses the appeal; 2. Orders the applicant to bear EUR 550 as the opponent s costs in the appeal proceedings. Th. Margellos C. Rusconi Ph. von Kapff Registrar: J. Pinkowski