COLOVO | Decision 2623620
Date Published: May 1, 2018
OPPOSITION No B 2 623 620
NRA – Comércio de artigos de decoração, Limitada, Rua Padre António, 27, 4470-136 Maia, Portugal (opponent), represented by Ruy Pelayo de Sousa Henriques and Pedro Gil da Silva Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 – 6°. Dt°., 4000-432 Porto, Portugal (professional representatives)
a g a i n s t
Lovo Drinks Ltd, Little Hilbre, Bucks Hill, Kings Langley, Hertfordshire WD4 9AP, United Kingdom (applicant), represented by Dolleymores, 9 Rickmansworth Road, Watford, Hertfordshire WD18 0JU, United Kingdom (professional representative).
On 10/01/2017, the Opposition Division takes the following
1. Opposition No B 2 623 620 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 534 101, namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 2 894 319. 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 European Union trade mark registration No 2 894 319.
- The goods
The goods on which the opposition is based are the following:
Class 25: Articles of clothing.
The contested goods are the following:
Class 25: Clothing; footwear; headgear.
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.
The contested clothing is identically contained in the opponent’s list of goods, albeit using a slightly different wording (namely articles of clothing).
The contested footwear serves the same purpose as the opponent’s articles of clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both articles of clothing and footwear. Therefore, the goods are similar.
The contested headgear and the opponent’s articles of clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, the contested headgear and the opponent’s articles of clothing are considered similar.
- 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 are directed at the public at large. The degree of attention is considered average.
- The signs
Earlier trade mark
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 earlier mark is a figurative mark consisting of the word ‘COLLOVE’ in standard black upper case letters that intersect with a figurative element consisting of two thick black diagonal lines. These lines partly obscure the two (still legible) letters ‘L’ of the mark. This figurative element, given its simplicity, will be attributed less trade mark value than the verbal element and, therefore, has a limited degree of distinctive character.
The word ‘COLLOVE’ does not exist as such in any of the official languages spoken in the relevant territory. However, the relevant public may perceive one-word signs as being composed of different elements, particularly if one (or all) of the parts has a clear and evident meaning. Therefore, the public in the relevant territory will naturally single out the word ‘*LOVE’ in the earlier mark, since it is a basic English word that will be understood in all Member States of the European Union as ‘attachment, affection’. The letters ‘COL*’have a meaning in some of the languages spoken in the relevant territory. For instance, ‘COL’ means ‘pass in a mountain range’ in English and French, ‘cabbage’ in Spanish, ‘neck’ or ‘collar’ in French, ‘with’ in Italian and ‘the narrower part of a bone or an organ’ in Romanian. For the remaining part of the public, this element does not convey a meaning.
Neither of these verbal elements has any connection with the relevant goods, except for the French-speaking part of the public, which would understand the word ‘COL’ as ‘collar’. The relevant goods are articles of clothing; therefore, for this part of the public, the word ‘COL’ will have a lower than average degree of distinctive character.
The contested sign is a word mark consisting of the word ‘COLOVO’, which would be understood by the Greek-speaking part of the public as the transliteration into Latin characters of the word ‘κολοβό’, meaning ‘tailless’, which does not have any connection with the relevant goods. The remaining part of the public will not perceive any meaning in the sign. In both cases, the word is deemed to have an average degree of distinctiveness.
Visually, the signs coincide in the letters ‘CO*LOV*’. However, they differ in the additional letter ‘L’ of the earlier mark and in their final letters, namely ‘E’ in the earlier mark and ‘O’ in the contested sign. They also differ in the slight stylisation and the additional figurative element of the earlier sign. Although the figurative element will be attributed less trade mark significance by the relevant consumers than the verbal element, and as such will play a minor role, it will not be completely ignored. Therefore, the signs are visually similar to an average degree.
Aurally, since the relevant public will identify in the earlier mark the English word ‘LOVE’, it is reasonable to assume that these letters will be pronounced as they would be in English (/‘lʌv/), and, therefore, the letter ‘E’ will be barely audible. Consequently, the pronunciation of the signs will coincide in the sound of the letters /CO(L)LOV/, present in both signs. The additional letter ‘L’ of the earlier sign, which has no counterpart in contested mark, will not create a significant aural difference. The signs will also differ in the sound of the additional letter ‘O’ of the contested sign, which has no counterpart in the earlier mark. Therefore, the signs are aurally similar to an average degree.
Conceptually, and bearing in mind the above considerations relating to the concepts conveyed by the signs, these are conceptually dissimilar for the Greek-speaking part of the public, since they will be associated with different meanings. For the remaining part of the public that will perceive the contested sign as an invented word but will understand the meaning of (at least) the verbal element ‘LOVE’ in the earlier mark, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 less distinctive figurative element as explained in section c) above.
- Global assessment, other arguments and conclusion
The relevant goods are partly identical and partly similar. The earlier mark has an average degree of distinctiveness and the degree of attention of the relevant public, which is the public at large, is average.
Admittedly, the signs are visually and aurally similar to an average degree, due to the coincidence in the letters ‘COL*OV’. However, this is not sufficient in the present case to support a finding of likelihood of confusion. Indeed, as explained in detail in section c) above, the entire relevant public will split the earlier mark into two parts – ‘COL’ and ‘LOVE’ – on account of the latter being a basic English word that will be understood by the consumers of all the Member States of the European Union. Furthermore, part of the public will also associate the element ‘COL’ with a concept. On the other hand, the Greek-speaking part of the public will understand the contested sign, ‘COLOVO’, as meaning ‘tailless’, whereas for the remaining consumers this word has no semantic content. Therefore, because the relevant public will single out the element ‘LOVE’ in the earlier mark, there is a conceptual difference between the signs that is sufficient to counteract the visual and aural similarities arising from the letters that they have in common, namely ‘COL*’ and ‘*OV*’ (irrespective of whether the element ‘COL’ is understood or not). This is even truer for those consumers who also perceive a meaning in the contested sign ‘COLOVO’, since, for them, the signs are conceptually dissimilar.
In addition and bearing in mind the fact that in clothes shops customers often choose products by themselves, the figurative element of the earlier mark, although is not particularly distinctive, it will not be completely ignored by consumers and will still contribute, to a certain extent, to the difference in the visual impressions created by the two marks.
Consequently, in a global assessment of all the factors relevant to the present case (including the fact that the goods are partly identical and partly similar), it is considered that the relevant public is not likely to believe that the earlier mark and the contested sign originate from the same or economically-linked undertakings, and, as a result, there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR. Therefore, the opposition must be rejected.
The opponent has also based its opposition on Portuguese trade mark registration No 360 139 for the figurative mark. Since this mark is identical to the one which has been compared and considering that it covers the same goods in Class 25, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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
VAN DEN EEDE
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.