C | Decision 2630971 - Mariano Esquitino Madrid v. Charming Charlie LLC
Date Published: Oct 11, 2017
OPPOSITION No B 2 630 971
Mariano Esquitino Madrid, Marie-Curie, 21-Elche Parque Industrial, 03203 Elche (Alicante), Spain (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1°, 28010 Madrid, Spain (professional representative)
a g a i n s t
Charming Charlie LLC, 5999 Savoy Drive, Housten, Texas 77036, United States of America (applicant), represented by Finnegan Europe LLP, 16 Old Bailey, London EC4M 7EG, United Kingdom (professional representative).
On 29/03/2017, the Opposition Division takes the following
1. Opposition No B 2 630 971 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 264 742. The opposition is based on European Union trade mark registrations No 7 073 588 and No 12 011 383. 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 goods and services
The goods and services on which the opposition is based are the following:
(1) European Union trade mark registration No 7 073 588 (hereinafter referred to as ‘Earlier Mark 1’)
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; children’s school bags and school rucksacks; none of the aforementioned goods for sports use or for use in connection with bicycles or bicycle related goods.
Class 25: Footwear for children, not including bicycle shoes.
(2) European Union trade mark registration No 12 011 383 (hereinafter referred to as ‘Earlier Mark 2’)
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Class 35: Wholesaling and retailing in shops and via the internet of all kinds of clothing, footwear and headgear, textiles and textile goods, bed and table covers, games and playthings, gymnastic and sporting articles, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, precious metals and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery.
The contested goods and services are the following:
Class 14: Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments; watches.
Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; duffle bags; travel bags; purses, handbags and wallets.
Class 35: Advertising; business management; business administration; office functions; retail store services featuring women’s clothes, headwear, footwear and fashion accessories.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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
Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments are identically contained in the lists of goods of both Earlier Mark 2 and the contested sign.
The contested watches are included in the broad category of the opponent’s horological and chronometric instruments of Earlier Mark 2. Therefore, they are identical.
Contested goods in Class 18
The contested leather and imitations of leather include, as a broader category, the opponent’s leather and imitations of leather; none of the aforementioned goods for sports use or for use in connection with bicycles or bicycle related goods 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.
The contested trunks and travelling bags; duffle bags; travel bags; purses, handbags and wallets are included in or overlap with the opponent’s goods made of these materials and not included in other classes (i.e. of leather and imitations of leather); none of the aforementioned goods for sports use or for use in connection with bicycles or bicycle related goods covered by Earlier Mark 1 to the extent that they can be made of leather or imitations of leather. Therefore, they are identical.
The contested whips, harness and saddlery overlap with the opponent’s goods made of these materials and not included in other classes (i.e. of leather and imitations of leather); none of the aforementioned goods for sports use or for use in connection with bicycles or bicycle related goods of Earlier Mark 1. Therefore, they are identical.
The contested animal skins, hides; umbrellas and parasols and respectively walking sticks are similar to a low degree to the opponent’s retailing in shops and via the Internet of [...] animal skins, hides, [...], umbrellas, parasols and walking sticks [...] respectively in Class 35 of Earlier Mark 2. Although the natures, purposes and methods of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Contested services in Class 35
The contested retail store services featuring women’s clothes, headwear, footwear are included in the broad category of the opponent’s retailing in shops and via the Internet of all kinds of clothing, footwear and headgear of Earlier Mark 2. Therefore, they are identical.
The contested retail store services featuring fashion accessories overlap with the opponent’s retailing in shops and via the Internet of all kinds of jewellery of Earlier Mark 2. Therefore, they are identical.
The contested advertising; business management; business administration; office functions are aimed at supporting or helping other businesses to do or improve their business. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company and involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. Business administration services are intended to help companies with the performance of business operations and consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. Office functions are the internal day-to-day operations of an organisation, including the administration and the support services in the ‘back office’, and mainly cover activities that assist in the working of a commercial enterprise.
The contested services indicated above are usually rendered by specialised companies such as business consultants, advertising agencies, employment agencies, auditors, etc. and/or are usually focused on a specific type of business (to assist with the running, management and business affairs of commercial undertakings). These are specific services, supplied in areas completely unrelated to, and having different natures and purposes from, the opponent’s goods and services in Classes 14, 18, 25 and 35 of Earlier Marks 1 and 2. They have different providers and distribution channels and are neither complementary nor in competition. Therefore, they are dissimilar.
- 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 and services found to be identical or similar (to a low degree) are directed at the public at large and at business customers with specific professional knowledge or expertise in the relevant field. The degree of attention will be higher in relation to the goods in Class 14, which are expensive luxury goods and will be selected carefully by the relevant consumers. In relation to the remaining goods and services, the degree of attention will be average.
- The signs
Earlier Mark 1
Earlier Mark 2
(Earlier Mark 1 and Earlier Mark 2 are collectively referred to as the ‘Earlier Marks’)
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 contested sign consists of a stylised letter ‘C’ with black edges and a partly white interior and having a black circle at each end.
The Earlier Marks each consist of a thick black line forming an incomplete circle with a smaller blue circle in the middle, which may also be perceived by part of the relevant public as a stylised upper case ‘C’. Therefore, the Opposition Division finds it appropriate to first examine the opposition in relation to the public that perceives the Earlier Marks as portraying a stylised upper case ‘C’. This part of the relevant public would be more likely to confuse the signs, in view of the coincidence in the letter ‘C’, and this scenario therefore constitutes the opponent’s best-case scenario.
The distinctiveness of the letter ‘C’ in the Earlier Marks and the contested sign is seen as normal, since it does not directly describe or allude to (in a manner that could affect the distinctiveness in a material way) any characteristics of the relevant goods and services. The blue circle in the middle of the Earlier Marks is, however, a simple geometric shape in blue, which on its own has no ability to function as a badge of origin. Therefore, it is the letter ‘C’ that is considered the most distinctive element in both Earlier Marks.
Neither the Earlier Marks nor the contested sign have any element that could be considered clearly more dominant (visually eye-caching) than other elements.
Visually, the signs coincide in that they all depict an upper case ‘C’. However, they differ in all other aspects as detailed below.
The opponent refers to case-law and claims that, since the verbal element of the sign usually has a stronger impact on the consumer than the figurative element, consumers will pay more attention to the wording of the signs, which is identical. The Opposition Division does not agree with this assessment, since the signs under comparison are one-letter signs and, according to the established practice, in short signs even small differences may lead to a different visual impression, since the public is able more easily to perceive all of their single elements.
Consequently, even though the signs under comparison depict an upper case letter ‘C’, the fact that they are short one-letter signs makes the differences in the graphical depictions of particular importance. The Earlier Marks depict a letter ‘C’ presented in the form of a thick black almost circular line and containing a blue circle in the middle, which clearly contrasts with the black colour of the letter ‘C’ in the overall composition of the marks. The contested sign, on the other hand, is a black oval letter ‘C’, with contrasting shades in the letter itself and having a circular element at each end. Considering the differences in shapes, colours, shading and overall presentational features, the graphical depiction of the contested sign clearly differs from those of the Earlier Marks and these differences are sufficient to convey to the consumer a different visual impression. Therefore, the signs are considered visually dissimilar.
Aurally, since the Earlier Marks and the contested sign consist of one and the same letter, they will be pronounced identically.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the Earlier Marks and the contested sign will be perceived as the letter ‘C’, the marks are considered conceptually identical.
- 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 Marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the Earlier Marks must be seen as normal.
- 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).
As concluded above, the contested goods and services are partly identical, partly similar (to a low degree) and partly dissimilar to the opponent’s goods and services, and they target both the public at large and business customers, whose degree of attention will vary from average to higher than average.
The distinctiveness of the Earlier Marks is average.
The signs are considered visually dissimilar and aurally and conceptually identical.
It follows from case-law that, where trade marks consist of the same letter, as do those in the present proceedings, it is only when the later trade mark causes a sufficiently different visual impression that a likelihood of confusion can be safely ruled out, given that in such cases the marks will be identical from an aural and a conceptual point of view (10/05/2011, T-187/10, G, EU:T:2011:202, § 60).
Furthermore, it must be taken into account that for the relevant goods (in Classes 14 and 18) and services (i.e. retail store services) the visual aspect plays a greater role, since the majority of the goods in question will be examined visually prior to their purchase.
Considering this, the way the letter ‘C’ appears in each sign is decisive. The manners in which this letter is depicted in the Earlier Marks and the contested sign are different to the extent that the signs under comparison were found visually dissimilar. This dissimilarity is clearly perceptible and sufficient to exclude any likelihood of confusion even in relation to the identical goods and services.
Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
For the sake of completeness, the Opposition Division points out that there is no need to proceed further to the comparison of the signs for the part of the public that does not perceive the Earlier Marks as the letter ‘C’, since the outcome of the present decision will not be different. Indeed, if there is no likelihood of confusion for those consumers that perceive the Earlier Marks as ‘C’, a fortiori, there is no likelihood of confusion for those consumers who will perceive them in a different way, since for these consumers there is no conceptual or aural identity and the signs under comparison will be even further apart.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.