Decision on Opposition No B 2 827 189 page: 2 of 7
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
The goods in Classes 18 and 25 on which the opposition is based are the following:
European Union trade mark registration No 8 117 038
Class 25: Clothing, footwear, headgear.
European Union trade mark registration No 13 642 558
Class 18: Leather and his/her imitations; animal skins, hides; handbags, bags,
satchels, credit-card cases, briefcases, trunks and travelling bags, purses, travel
bags, backpacks, book bags, bags for footwear, bumbags, pocket wallets, bags with
handles, credit-card holders, carrying boxes, key rings (leatherware) and suitcases;
umbrellas and parasols; walking sticks; leads and clothing for animals; gym bags,
toiletry bags, vanity cases, not fitted and vanity cases, sold empty.
The contested goods in Classes 18 and 25 are the following:
Class 18: Handbags, purses and wallets; ladies handbags; evening handbags;
gentlemen's handbags; bags; casual bags; athletics bags; gym bags; travel bags;
sport bags; beach bags.
Class 25: Clothing, namely, belts, bras, corsets, dresses, gowns, hats, jackets,
pyjamas, pants, scarves, shawls, shirts, shoes, skirts, sweaters, tank tops, tube tops,
underwear, vests; Footwear, namely, athletic footwear, beach footwear, bridal
footwear, casual footwear, work footwear, formal footwear, children's footwear,
evening footwear, exercise footwear, medical personnel footwear, outdoor footwear,
rain footwear, ski footwear, sports footwear; Headgear, namely, berets, hats, caps.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
However, the term ‘namely’, used in the applicant’s list of goods to show the
relationship of individual goods to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
Contested goods in Class 18
Handbags; bags are identically contained in both lists of goods.
The contested purses overlap with the opponent’s bags. Therefore, they are identical.