OPPOSITION No B 1 801 243

Macho Products, Inc., 10045 102nd Terrace, Sebastian, FL 32958, United States of America (opponent), represented by Lexdellmeier Intellectual Property Law Firm, Nymphenburger Str. 23, 80335 Munich, Germany (professional representative)

a g a i n s t

DECS, Société par actions simplifiée à associé unique, Zac Henri B, 233, avenue Laurent Cely, 92230 Gennevilliers, France (applicant), represented by Inlex IP Expertise, 5, rue Feydeau, 75002 Paris, France (professional representative).

On 23/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 801 243 is partially upheld, namely for the following contested goods and services:

Class 18: Collars and bracelets of leather and imitations of leather, handbags, pocket wallets, purses, briefcases, key cases, card holders, vanity sets (not fitted).

Class 25: Clothing, underwear, lingerie, pyjamas, dressing gowns, shirts, nightdresses, pants, neckties, scarves, shawls, stoles, sashes for wear, belts, shoes and beach shoes (except orthopaedic footwear), slippers, bathing suits, bath robes, bathing caps, sarongs, headgear, headbands (clothing); socks, knee socks, tights, stockings; bathing suits and trunks; boxer shorts; briefs; shirts; cardigans; sweaters; jackets, trousers; headgear.

Class 35: Retailing of clothing, underwear, lingerie, pyjamas, dressing gowns, shirts, nightdresses, pants, neckties, scarves, shawls, stoles, sashes for wear, belts, shoes and beach shoes (except orthopaedic footwear), slippers, bathing suits, bath robes, bathing caps, sarongs, headgear, headbands (clothing), socks, stockings, knee-high stockings, swim leggings and bathing trunks, boxer shorts, underpants, shirts, cardigans, sweaters, trousers and jackets; the bringing together, for others, of goods (except the transport thereof), namely goods relating to the field of clothing and fashion accessories, enabling customers to view and purchase the aforesaid goods by all means.

2. Community trade mark application No 9 113 721 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 9 113 721. The opposition is based on Community trade mark registration No 411 496. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods and services

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 goods on which the opposition is based are the following:

Class 8: Cutlery; side arms; hand tools.

Class 25: Clothing, footwear, headgear except for jeanswear.

Class 28: Games and playthings; gymnastic and sporting articles (included in class 28), in particular protective training gear, training gear accessories.

The contested goods and services are the following:

Class 3: Perfumery, namely perfumes, eau de parfum, eau de Cologne, eau de toilette, deodorants for personal use; essential oils; masks for cosmetic use, namely face care masks, beauty masks; toiletries, namely; bath salts; bath and shower gel; foam baths; toilet soaps and cakes of soap; cosmetics in the form of creams, milks, oils, emulsions, liquids, lotions, goods in aerosol and gel form for the face, body and hands; shampoos; bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, cosmetics, hair lotions; dentifrices.

Class 14: Jewellery; jewellery, precious stones; horological and chronometric instruments and parts thereof; watches and watch straps; watch springs and watch glasses; small clocks; alarm clocks; dials; jewellery cases or boxes of precious metals; cases, bracelets, chains, jewellery, silver ornaments, rings, earrings, charms, brooches, chains, necklaces, key rings (trinkets or fobs), cases for jewellery or clock- and watchmaking; medals, goldware, all the aforesaid goods being made mainly or partly of precious metals including gold, silver, or coated therewith, and which may be adorned with precious, semi-precious, synthetic stones, cultured or imitation pearls, figurines of precious metal, precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes.

Class 18: Leather and imitations of leather, leatherware, namely whips, harness and saddlery, collars and bracelets of leather and imitations of leather, handbags, travelling bags, trunks, suitcases and valises, luggage, pocket wallets, purses, briefcases, card holders, purses, briefcases, card holders, vanity sets (not fitted), polishing sets of leather (not fitted), travel sets (not fitted), key cases and saddlery, trimmings of leather for articles for the display of jewellery and watches, leather and imitations of leather, animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks.

Class 25: Clothing, underwear, lingerie, pyjamas, dressing gowns, shirts, nightdresses, pants, neckties, scarves, shawls, stoles, sashes for wear, belts, shoes and beach shoes (except orthopaedic footwear), slippers, bathing suits, bath robes, bathing caps, sarongs, headgear, headbands (clothing); socks, knee socks, tights, stockings; bathing suits and trunks; boxer shorts; briefs; shirts; cardigans; sweaters; jackets, trousers; headgear.

Class 35: Advertising using displays, direct mail advertising, demonstration of goods, window dressing; direct mail advertising and advertising documents; rental of advertising space, namely leaflets, prospectuses, printed matter, samples, rental of advertising space and rental of advertising time on communication media, organisation of exhibitions for commercial or advertising purposes, sales promotion for others; dissemination of advertising matter, publication of publicity texts; online advertising on a computer network or via the Internet; radio, television, photographic, cinematographic, direct mail advertising; retailing of perfumery, namely: perfume, eau de parfum, eau de Cologne, toilet water, deodorants for personal use, essential oils, cosmetic masks, namely face masks, beauty masks, toiletries, namely bath salts, bath and shower gels, foam baths, toilet soaps and cakes of soap, cosmetics in the form of creams, milks, oils, emulsions, fluids, lotions, aerosol and gel preparations for the face, body and hands, shampoos, jewellery, precious stones, horological and chronometric instruments and parts therefor, watches and watchbands, watch springs or glasses, small clocks, alarm clocks, dials, jewellery cases or boxes of precious metal, cases, bracelets, chains, jewellery, silver ornaments, rings, earrings, charms, brooches, chains, necklaces, key rings (trinkets or fobs), cases for jewellery or clock- and watchmaking, medals, goldware, all the aforesaid goods being made mainly or partly of precious metals including gold, silver, or coated therewith, and which may be adorned with precious, semi-precious, synthetic stones, cultured or imitation pearls, works of art of common metal, statues or figurines of common metal, figurines of precious metal, leather and imitations of leather, leatherware, namely whips, harness and saddlery, collars and bracelets of leather and imitations of leather, handbags, travelling bags, trunks, suitcases and valises, luggage, pocket wallets, purses, briefcases, card holders, vanity sets (not fitted), polishing sets of leather (not fitted), travel sets (not fitted), key cases and saddlery, trimmings of leather for articles for the display of jewellery and watches, clothing, underwear, lingerie, pyjamas, dressing gowns, shirts, nightdresses, pants, neckties, scarves, shawls, stoles, sashes for wear, belts, shoes and beach shoes (except orthopaedic footwear), slippers, bathing suits, bath robes, bathing caps, sarongs, headgear, headbands (clothing), socks, stockings, knee-high stockings, swim leggings and bathing trunks, boxer shorts, underpants, shirts, cardigans, sweaters, trousers and jackets; business management; business consultancy; consultancy and assistance in the management and organisation of business affairs within a franchise network; Business management and organisational consultancy and assistance within the framework of franchise networks; Business management and organisational consultancy and assistance within the framework of franchise networks; market studies; economic forecasting; business statistical information; market research; computerized file management; collection and systematic ordering of data in a central file; organisation of promotional and advertising operations to obtain customer and personnel loyalty; presentation of goods on all means of communication for retail sale; the bringing together, for others, of goods (except the transport thereof), namely goods relating to the field of beauty and personal hygiene (perfumery, cosmetic preparations and toiletries), clothing and fashion accessories, jewellery, enabling customers to view and purchase the aforesaid goods by all means; business administration; office functions.

The contested CTM application seeks protection for the entire class headings of Classes 3 and 14 of the Nice Classification. It was filed on 18/05/2010. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade mark applications filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

Consequently, in order to take account of the entire alphabetical list in Classes 3 and 14 of the contested CTM application, the Opposition Division will compare the goods of the earlier mark with both (i) the general indications specified and (ii) any items in the alphabetical lists that do not fall within the natural and usual meaning of these general indications.

In the case of Classes 3 and 14, the Opposition Division has identified the following items in the alphabetical lists covered by the contested CTM application that do not fall within the natural and usual meaning of these general indications:

Class 3: Cobblers’ wax; shoemakers’ wax; tailors’ wax.

Class 14: Cases for watches [presentation].

Therefore, as regards these classes, both the general indications specified and the items listed above will be compared.

An interpretation of the wording of the lists of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’ used in the opponent’s list of goods and the term ‘including’ used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 3

The contested perfumery, namely perfumes, eau de parfum, eau de Cologne, eau de toilette, deodorants for personal use; essential oils; masks for cosmetic use, namely face care masks, beauty masks; toiletries, namely; bath salts; bath and shower gel; foam baths; toilet soaps and cakes of soap; cosmetics in the form of creams, milks, oils, emulsions, liquids, lotions, goods in aerosol and gel form for the face, body and hands; shampoos; bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, cosmetics, hair lotions; dentifrices; cobblers’ wax; shoemakers’ wax; tailors’ wax consist of perfumery, preparations relating to cosmetics and personal hygiene, preparations for general cleaning or polishing purposes and tailors’, shoemakers’ and cobblers’ wax.

The opponent’s goods in Class 8 are implements for cutting and eating food, non-explosive weapons and hand tools and implements that are powered by human effort, rather than by a motor or some other power source. The opponent’s goods in Class 25 are articles of clothing, headgear and footwear, used to cover and protect various parts of the human body against the elements. They are also articles of fashion. The opponent’s goods in Class 28 are games and playthings for recreational purposes, sporting articles and sporting equipment.

There are no relevant points in common between the contested goods in Class 3 and the opponent’s goods in Classes 8, 25 and 28. These goods have notably different natures and methods of use, and they serve different needs. In addition, they are neither complementary nor in competition. Their producers, distribution channels and relevant publics are usually also different.

The fact that, as pointed out by the opponent, in certain situations some of the opponent’s goods (such as perfumery or cosmetics) may be sold in the same stores as some of the contested goods (e.g. large department stores or supermarkets) is not sufficient to find similarity between these goods. The relevant public is aware that the goods and services offered in such spaces come from a multitude of independent undertakings. Consequently, the point of sale is less decisive when determining whether or not the relevant public considers that goods or services have a common origin merely because they are sold or provided in the same place. Therefore, the contested goods are dissimilar to the opponent’s goods.

Contested goods in Class 14

The opponent refers to a previous decision of the Office to support its arguments, namely to the Decision ruling on Opposition No 980 070 of 26/07/2007. In the said Decision, an average degree of similarity was found between, inter alia, cutlery and side arms in Class 8 and goods in Class 14, owing to the fact that in both cases the goods can be made of silver. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the CTMR, and not to the Office’s practice in earlier decisions (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’).

Furthermore, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

Bearing in mind all the above, the Opposition Division finds that the contested goods in Class 14 are dissimilar to the earlier goods in Class 8. The contested goods consist of jewellery, precious stones, horological and chronometric instruments, cases for watches, precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes. As regards the goods in precious metals or coated therewith included in Class 14, as the Nice Classification heading clarifies, those are only items that cannot be classified in another class, according to their main functional characteristics. From a consumer perspective, those functional characteristics are far more important than the material from which a particular product is made. Indeed, a vast variety of functional articles may be made of silver, for instance, which is not sufficient to find them similar to goods classified in Class 14.

The opponent’s goods in Class 8 are implements for cutting and eating food, non-explosive weapons and hand tools and implements that are powered by human effort, rather than by a motor or some other power source. They are classified in Class 8 due to their particular function and primary purpose, which is their essential characteristic, as viewed by consumers. Logically, this functional nature and purpose has a greater impact for the public than their material composition. The fact that a nutcracker or a kitchen knife can be made of silver (or other precious metal), is not sufficient to render it similar to any and all goods which could be made of silver. The goods under comparison differ in their nature, ultimate purpose and method of use. They are not in competition and do not target the same consumers. Furthermore, usually they do not have the same origin or distribution channels.

The contested goods are also dissimilar to the remaining earlier goods in Classes 25 and 28, which are articles of clothing, headgear and footwear, games, playthings and sporting articles. These goods differ clearly in nature and purpose. They are not complementary because the use of the goods in Class 14 is not essential or important for the use of the earlier goods. Neither are they in competition. They satisfy different needs, target different consumers and normally originate from different undertakings.

Contested goods in Class 18

The contested collars and bracelets of leather and imitations of leather, handbags, pocket wallets, purses (mentioned twice), briefcases (mentioned twice), key cases, card holders (mentioned twice in the applicant’s specification) and vanity sets (not fitted) have relevant relations to the opponent’s clothing, footwear, headgear except for jeanswear in Class 25 (which are used to cover parts of the human body and protect them against the elements, and are also articles of fashion). This is because consumers are likely to consider the aforementioned goods in Class 18 as complementary accessories to articles of outer clothing, headgear and even to footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing, headgear and footwear to directly produce and market goods such as the contested ones. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The contested leather and imitations of leather (mentioned twice in the applicant’s specification); animal skins, hides are various kinds of animals’ skins (or imitations thereof). These are raw materials. It should be noted that the mere fact that one good is used for the manufacture of another (for example, footwear made of leather) is not sufficient in itself to conclude that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets and have a different nature and purpose from those of the clothing, headgear and footwear in Class 25 covered by the opponent’s mark. Neither is there a relevant connection between those goods and the remaining earlier goods in Classes 8 and 28. These goods are, therefore, dissimilar.

The contested trunks (mentioned twice in the applicant’s specification) are large packing cases or boxes that clasp shut, used as luggage or for storage; umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried as protection from the sun; walking sticks are canes or other staffs used as an aid in walking; leatherware, namely whips, harness and saddlery (the latter mentioned twice in the applicant’s specification) are instruments used for driving animals, the gear or tackle with which a draft animal pulls a vehicle or implement and the equipment for horses, such as saddles and harnesses. The nature of these goods is different from that of clothing, footwear, headgear except for jeanswear in Class 25 and the remaining goods covered by the opponent’s mark in Classes 8 and 28. They serve very different ultimate purposes (storage, protection from rain/sun, help in walking, aid in the control and/or riding of animals versus covering/protecting the human body, implements for cutting and eating food, non-explosive weapons, hand tools powered by human effort, games and playthings for recreation and sporting equipment). They do not usually have the same retail outlets and they are usually not made by the same manufacturers. Therefore, the contested umbrellas, parasols and walking sticks; leatherware, namely whips, harness and saddlery; trunks are considered dissimilar to the opponent’s goods in Classes 8, 25 and 28.

The same reasoning applies to the contested travelling bags (mentioned twice in the applicant’s specification), luggage, travel sets (not fitted), suitcases and valises. These goods are considered dissimilar to the opponent’s goods in Classes 8, 25 and 28. The aforementioned contested goods are intended for carrying things when travelling and do not satisfy the same needs as the opponent’s goods. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

The contested polishing sets of leather (not fitted) are carriers specifically adapted to fit polishing materials, such as shoe polish accessories. The contested trimmings of leather for articles for the display of jewellery and watches consist of decorative leather strips used for the presentation of jewellery and watches in a way which is convenient or attractive for the consumers. These goods have no relevant points in common with the earlier goods in Classes 8, 25 and 28. They differ clearly in their natures; they are neither complementary nor in competition. In addition, their functional characteristics are evidently different, as they satisfy different needs. They do not target the same public and, usually, do not originate from the same companies. The goods are, therefore, considered dissimilar.

Contested goods in Class 25

The contested clothing is identically contained in both lists of goods.

The contested underwear, lingerie, pyjamas, dressing gowns, shirts, nightdresses, pants, neckties, scarves, shawls, stoles, sashes for wear, belts, bathing suits, bath robes, sarongs, headbands (clothing); socks, knee socks, tights, stockings; bathing suits and trunks; boxer shorts; briefs; shirts; cardigans; sweaters; jackets and trousers are included in the broad category of the opponent’s clothing. Therefore, they are considered identical.

The contested headgear (mentioned twice in the applicant’s specification) includes, as a broader category, the opponent’s headgear except for jeanswear. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested bathing caps cannot be clearly separated from the opponent’s headgear except for jeanswear. These categories of goods overlap and are, therefore, considered identical.

The contested shoes and beach shoes (except orthopaedic footwear) and slippers are included in the broad category of the opponent’s footwear. Therefore, they are considered identical.

Contested services in Class 35

Retail and wholesale services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method 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.

Therefore, the contested retailing of clothing, underwear, lingerie, pyjamas, dressing gowns, shirts, nightdresses, pants, neckties, scarves, shawls, stoles, sashes for wear, belts, shoes and beach shoes (except orthopaedic footwear), slippers, bathing suits, bath robes, bathing caps, sarongs, headgear, headbands (clothing), socks, stockings, knee-high stockings, swim leggings and bathing trunks, boxer shorts, underpants, shirts, cardigans, sweaters, trousers and jackets; the bringing together, for others, of goods (except the transport thereof), namely goods relating to the field of clothing and fashion accessories, enabling customers to view and purchase the aforesaid goods by all means are similar to a low degree to the opponent’s clothing, footwear, headgear except for jeanswear in Class 25.

However, the contested services retailing of perfumery, namely: perfume, eau de parfum, eau de Cologne, toilet water, deodorants for personal use, essential oils, cosmetic masks, namely face masks, beauty masks, toiletries, namely bath salts, bath and shower gels, foam baths, toilet soaps and cakes of soap, cosmetics in the form of creams, milks, oils, emulsions, fluids, lotions, aerosol and gel preparations for the face, body and hands, shampoos, jewellery, precious stones, horological and chronometric instruments and parts therefor, watches and watchbands, watch springs or glasses, small clocks, alarm clocks, dials, jewellery cases or boxes of precious metal, cases, bracelets, chains, jewellery, silver ornaments, rings, earrings, charms, brooches, chains, necklaces, key rings (trinkets or fobs), cases for jewellery or clock- and watchmaking, medals, goldware, all the aforesaid goods being made mainly or partly of precious metals including gold, silver, or coated therewith, and which may be adorned with precious, semi-precious, synthetic stones, cultured or imitation pearls, works of art of common metal, statues or figurines of common metal, figurines of precious metal, leather and imitations of leather, leatherware, namely whips, harness and saddlery, collars and bracelets of leather and imitations of leather, handbags, travelling bags, trunks, suitcases and valises, luggage, pocket wallets, purses, briefcases, card holders, vanity sets (not fitted), polishing sets of leather (not fitted), travel sets (not fitted), key cases and saddlery, trimmings of leather for articles for the display of jewellery and watches; presentation of goods on all means of communication for retail sale; the bringing together, for others, of goods (except the transport thereof), namely goods relating to the field of beauty and personal hygiene (perfumery, cosmetic preparations and toiletries) and jewellery, enabling customers to view and purchase the aforesaid goods by all means are dissimilar to the opponent’s earlier goods in Classes 8, 25 and 28. Indeed, it should be noted that, apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retailing services in relation to the abovementioned goods consist of bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the earlier goods.

Furthermore, these goods and services are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods which are the object of the retail services at issue are either only similar or dissimilar to the opponent’s earlier goods in Classes 8, 25 and 28.

The remaining contested services in Class 35 (advertising using displays, direct mail advertising, demonstration of goods, window dressing; direct mail advertising and advertising documents; rental of advertising space, namely leaflets, prospectuses, printed matter, samples, rental of advertising space and rental of advertising time on communication media, organisation of exhibitions for commercial or advertising purposes, sales promotion for others; dissemination of advertising matter, publication of publicity texts; online advertising on a computer network or via the Internet; radio, television, photographic, cinematographic, direct mail advertising; organisation of promotional and advertising operations to obtain customer and personnel loyalty; business management; business consultancy; consultancy and assistance in the management and organisation of business affairs within a franchise network; business management and organisational consultancy and assistance within the framework of franchise networks; business management and organisational consultancy and assistance within the framework of franchise networks; market studies; economic forecasting; business statistical information; market research; computerized file management; collection and systematic ordering of data in a central file; business administration; office functions) are professional business management and administration, promotional, marketing and advertising services, as well as office functions services, intended to directly assist other businesses with the operation and management of their commercial enterprises.

They include services such as helping in the operation or management of commercial undertakings; managing the business affairs and commercial functions of other industrial or commercial enterprises; providing other companies with assistance in the sale of their goods and services by promoting their launch or sale or by reinforcing their position in the market; conducting market research and opinion polls for other companies; defining advertising and marketing strategies for other companies, etc. These services are provided by specialised companies which study their clients’ needs and provide all the necessary counselling, business management and administration, consultancy and advertising solutions for the successful marketing of their goods and services.

Even if the applicant’s services at issue are provided to companies which produce or sell goods identical to those protected by the earlier mark in Classes 8, 25 and 28, this is insufficient for a finding of similarity between them and the opponent’s goods, as their natures and intended purposes are clearly different. In addition, the goods and services at issue will not have the same provider, as the services in Class 35 are provided by specialised business and marketing professionals. Moreover, the relevant public will be different: the general public in the case of the opponent’s goods, and other businesses in the case of the applicant’s services. These goods and services are neither in competition with each other nor complementary. Consequently, they are considered dissimilar.

2. The signs

MACHO	MACHO LTD
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the word ‘MACHO’, which constitutes the earlier mark and the first word of the contested sign. On the other hand, they differ in the second element of the contested sign, ‘LTD’.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘MACHO’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the second element of the contested sign, ‘LTD’ (which will be pronounced as ‘limited’), which has no counterpart in the earlier mark.

Conceptually, the public in the relevant territory will perceive the word ‘MACHO’, present in both signs, as an adjective ‘denoting or exhibiting pride in characteristics believed to be typically masculine, such as physical strength, sexual appetite, etc.’ or as a noun denoting ‘a man who displays such characteristics’. The abbreviation ‘LTD’ of the contested sign will be perceived as signifying ‘Limited’, i.e. ‘a type of business organisation with limited liability’ (for all definitions, see Collins English Dictionary online, at http://www.collinsdictionary.com/dictionary/english/). Consequently, considered as a whole, the contested sign is likely to be perceived by the relevant English-speaking public as ‘a business organisation named MACHO’.

Therefore, to the extent that both signs will be associated with the semantic content underlying the word ‘MACHO’, the marks are conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive than other elements.

The abbreviation ‘LTD’ of the contested sign will be perceived by the public as an indication that the undertaking or enterprise producing/providing the relevant goods and services is organised in the form of a limited liability company. Therefore, this element merely describes the legal form of the manufacturer/provider of the goods and services. Consequently, the element ‘LTD’ is non-distinctive in relation to all the goods and services at issue. The English-speaking public understands the meaning of this non-distinctive element and will not pay it as much attention as the other, more distinctive, element of the mark, namely the word ‘MACHO’. Consequently, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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.

5. 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 different degrees) are directed at the public at large, whose degree of attention is considered to be average.

6. Global assessment, other arguments and conclusion

The contested goods and services are partly identical or similar (to different degrees) and partly dissimilar to the goods covered by earlier Community trade mark registration No 411 496.

The signs in comparison are similar, to the extent that they both contain the word ‘MACHO’. The visual and aural differences between them are not sufficient to exclude the likelihood of confusion between the marks.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.).

As seen above in section c) of this decision, the relevant consumers will promptly grasp the meaning of the additional element of the contested sign (‘LTD’) and will not pay particular attention to it, as it is non-distinctive in relation to all the goods and services at issue, as it simply indicates the legal form of the manufacturer/provider of these goods and services. Therefore, consumers will focus their attention on the more distinctive element of the contested sign, namely the word ‘MACHO’.

The coinciding word ‘MACHO’, which is the only element of the earlier mark, is placed at the beginning and, therefore, in the more conspicuous part of the contested sign. Moreover, this element will also establish a clear conceptual link between the signs, thus further contributing to the finding of similarity between them.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In reaching this conclusion, the Opposition Division has also taken into account the principle that a likelihood of confusion implies some interdependence among the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, it is considered that the similarity between the signs is sufficiently high to lead to a likelihood of confusion between them, even for the services which were found to be similar to a low degree.

Therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 411 496.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Deirdre QUINN	Gueorgui IVANOV	Ewelina ŚLIWIŃSKA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.