WALDEK | Decision 2764390
Date Published: Oct 1, 2017
OPPOSITION No B 2 764 390
Mª Esther Gómez Inaraja, Calle la Luna, 4, 40180 Brieva, Spain (opponent), represented by Marks & US, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative)
a g a i n s t
Oppermann London Ltd, 21 Clerkenwell Green, London, London City of, EC1R 0DX
United Kingdom (applicant)
On 16/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 764 390 is upheld for all the contested goods.
2. European Union trade mark application No 15 486 889 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 486 889. The opposition is based on European Union trade mark registration No 12 401 841. 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
The goods on which the opposition is based are, inter alia the following:
Class 18: Luggage, bags, wallets and other carriers.
The contested goods are the following:
Class 18: Leather briefcases; briefcases [leatherware]; briefcases [leather goods]; briefcases made of leather; leather cases; leather wallets; card wallets [leatherware]; leather bags and wallets; leather credit card wallets; leather bags; leather shopping bags; travelling bags [leatherware]; bags made of leather; leather suitcases; travelling bags made of leather; luggage tags [leatherware]; briefcases; folding briefcases; portfolio cases [briefcases]; briefcases for documents; briefcases and attache cases; leather credit card holder; credit card holders made of leather; credit card holders made of imitation leather; leather credit card cases; bags; boston bags; luggage bags; tote bags; game bags; hunters' game bags; bags (game -) [hunting accessories]; hand bags; sport bags; sports bags; all purpose sport bags; bags for sports; shoulder bags; luggage; wallets; card wallets; key wallets; wallets (pocket -); wallets including card holders; wallets with card compartments; handbags, purses and wallets; luggage, bags, wallets and other carriers.
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.
All the contested goods are at least similar to the opponent’s Luggage, bags, wallets and other carriers since they can have the same nature, the same purpose, the same producers, target the same public and have the same distribution channels.
- 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 at least similar are directed at the public at large. The degree of attention is considered to be average.
- The signs
walden | WALDEK |
Earlier trade mark | Contested sign |
The relevant territory is 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 two marks will be associated by part of the relevant public as referring to names or surnames. As these names or surnames are not descriptive, allusive or otherwise weak for the relevant goods, they are considered distinctive. They are also distinctive for the rest of the public for which ‘walden’ and ‘WALDEK’ will be perceived as meaningless.
Visually, the signs coincide in ‘WALDE-’, that is to say, their first five letters, out of six. They only differ in their last letter, ‘N’ in the earlier sign and ‘K’ in the contested sign. It is important to note that, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Moreover, the fact that the earlier mark is depicted in lower case letters and the contested sign in upper case letters is irrelevant for the comparison since according to case law, when at least one word mark is involved, the word as such is protected, not its written form. Therefore, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛WALDE-’, present identically in both signs. The pronunciation only differs in the sound of their last letter. Therefore, the signs are aurally highly similar.
Conceptually, regarding the part of the public who see the signs as names or surnames, the signs will be perceived as different names or surnames and are therefore not conceptually similar. For the part of the public who do not see the signs as surnames but as meaningless fanciful terms, a conceptual comparison is not possible and therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.
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.
- Global assessment, other arguments and conclusion
All the contested goods have been found at least similar to the earlier goods. They are directed at the public at large whose degree of attention will be average.
The signs are visually and aurally highly similar. For part of the relevant public they are not conceptually similar, for another part of the public the conceptual comparison remains neutral.
It is the contention of the Opposition Division that the differences between the signs will go largely unnoticed: a one letter difference at the end of the signs does very little to assist in distinguishing between the marks.
In this regard, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Since the differences between the signs are simply not enough to outweigh the clear similarities, the relevant consumer is likely to confuse the marks.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 401 841. It follows that the contested trade mark must be rejected for all the contested goods.
COSTS
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Saida CRABBE | Lucinda CARNEY | Vanessa PAGE |
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.