Mario Valentino S.p.A. v. Soledad Pacheco Sánchez

As to the comparison of the marks, the Board endorses the reasoning in the contested decision that the marks are similar and that there exists LOC in relation to identical and similar goods. In the statement of grounds the opponent limited the scope of the appeal to the effect that the contested decision be reversed only to the extent it found genuine use not to have been proven for (i) ‘leather and imitations of leather; animal skins, hides and (ii) ‘vanity cases, pocket-books, briefcases, attaché cases. However, as far as ‘leather and imitations of leather; animal skins, hides are concerned, the opponent seeks to prove genuine use of the earlier mark for such goods based on evidence it submits for the first time in the appeal proceedings. Indeed, the belated evidence must be rejected since it cannot be considered as additional within the meaning of Rule 50(1) CTMIR, when there is no relevant initial evidence filed in due time, which the new documents could actually supplement. In the Boards view, the remaining contested goods, namely ‘leather and imitations of leather; animal skins and hides and ‘umbrellas, parasols, walking sticks are dissimilar to the opponents goods for which proof of use of the earlier mark has been given. Firstly, the mere fact that a final product is principally made of a particular raw material is not per se sufficient to make that raw material similar to the final product. Secondly, brand extensions carried out by famous brands cannot by themselves render similar goods which are dissimilar according to the well established case law of the Court. In summary, there is no LOC for those goods. The appeal is dismissed.