OPPOSITION No B 2 365 396

Grupo Osborne S.A., Calle Fernán Caballero, 7, 11500 El Puerto de Santa María (Cádiz), Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Del Toro Footwear, LLC, 2750 NW 3rd Avenue #22, Miami FL 33127, United States of America (applicant), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative).

On 20/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 365 396 is upheld for all the contested goods.

2. European Union trade mark application No 11 878 717 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 11 878 717 for the word mark ‘DEL TORO’. The opposition is based on European Union trade mark No 2 844 264 for the word mark ‘TORO’. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 18: Goods of leather and imitations of leather (not included in other classes), wallets, suitcases, backpacks, briefcases, purses, umbrellas, parasols and saddlery.

Class 25: Clothing, footwear, headgear; belts.

The contested goods are the following:

Class 18: Leather bags; leather accessories, namely wallets, card cases, bracelets, key fobs (non-electronic), beauty cases, bank note holders.

Class 25: Clothing; belts; shoes, slippers, leather shoes, dress shoes, boots, half boots, laced boots, esparto shoes; hats; footwear; headwear; leather accessories, namely belts.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

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.

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 18

The contested leather accessories, namely wallets are included in the broad category of the opponent’s wallets. Therefore, they are identical.

The contested leather bags overlap with the opponent’s suitcases, as both goods might be used for holding traveller’s clothing or personal articles. They are therefore identical.

The contested leather accessories, namely card cases, bank note holders are highly similar to the opponent’s wallets, as they usually have the same purpose (holding cards and/or bank notes) and nature. They typically coincide in producer, relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested leather accessories, namely beauty cases are similar to the opponent’s purses, as they usually coincide in producer, relevant public and distribution channels.

The contested leather accessories, namely bracelets, key fobs (non-electronic) are similar to the opponent’s purses. Purses can be small leather accessories (e.g. small purses for coins), just like the contested goods, and therefore target the same relevant public, share the same distribution channels and be produced by the same undertaking.

For the sake of clarity, according to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings v1.1 (20/02/2014), goods made of leather and imitations of leather does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. Unclear and imprecise terms can only be taken into account in their most natural and literal sense but cannot be construed as constituting a claim to goods or services that cannot be covered by this meaning without further specification. As a result, while the abstract meaning of the term goods made of leather and imitations of leather can be understood, the type of goods concerned is unclear. These goods cover a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors.

It follows that when comparing the opponent’s unclear and imprecise term goods made of leather and imitation of leather (not included in other classes) with the contested leather accessories, namely card cases, bracelets, key fobs (non-electronic), beauty cases, bank note holders (found similar to varying degrees to other goods covered by the earlier mark) they cannot be construed as relating to the same goods when such characteristics or methods of use have not been expressly identified in the specification and cannot be understood from its natural and literal meaning. Therefore, while the terms may be compared, they cannot, on the basis of the insufficient information and facts provided by the imprecise specification of the earlier mark, be considered to have the same purpose or methods of use, or to be complementary to each other or in competition. Furthermore, they cannot be considered to target the same relevant public or share the same distribution channels. Consequently, in the absence of a further specification (by way of a partial surrender) of the unclear and imprecise term goods made of leather and imitation of leather (not included in other classes), it cannot be considered identical to the contested goods, or to have a higher degree of similarity with them than that already found when comparing these contested goods with the other goods covered by the earlier mark as set out above.

Contested goods in Class 25

The contested clothing; belts; shoes, slippers, leather shoes, dress shoes, boots, half boots, laced boots, esparto shoes; hats; footwear; headwear; leather accessories, namely belts are identical to the opponent’s clothing, footwear, headgear; belts respectively, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

2. 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 to varying degrees are directed at the public at large. The degree of attention is average.

3. The signs

TORO	DEL TORO
Earlier trade mark	Contested sign

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

All the elements in both signs are meaningful in certain territories, for example in those countries where Spanish is understood, and where the meaning of the signs may lead to a lower distinctiveness of such elements in relation to the goods in dispute. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public where none of the elements of the signs have a meaning.

Both signs are word marks, sharing the element ‘TORO’. The contested sign consists in addition to the element ‘TORO’ of the word ‘DEL’, placed at its beginning. None of the elements of the signs have a meaning for the relevant German-speaking public. The elements of the signs are neither descriptive nor otherwise weak for the relevant goods and are therefore of normal distinctive character.

Visually and aurally, the signs coincide in the word/sound ‘TORO’, which is distinctive and constitutes the entire earlier mark. The signs differ to the extent that the contested mark consists of the additional word/sound ‘DEL’, which, although being placed at the beginning of the sign, is shorter than the shared element ‘TORO’. Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the German-speaking public in the relevant territory. Since a conceptual comparison is not possible, 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.

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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case the goods found to be identical or similar to varying degrees are directed at the public at large, who will display an average degree of attention.

The signs are visually and aurally similar to an average degree, whereas a conceptual comparison is not possible for the relevant German-speaking public under analysis. The common element ‘TORO’ constitutes the entire earlier mark. The signs differ only to the extent that the contest sign consists of the additional, but shorter word ‘DEL’, which does not have a counter part in the earlier mark. Furthermore, the distinctiveness of the earlier mark has been found to be normal.

Taking into account all the circumstances of the case, the Opposition Division is of the opinion that the above mentioned difference between the marks is not sufficient to counterbalance the similarities between them. The relevant public could be mistaken regarding the origin of all the relevant goods, which includes the ones which have been found to be similar. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Moreover, account has to be taken of the fact that the average consumers rarely has the chance to make a direct comparison between different marks, but must trust its imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, and in the absence of particular concepts, which would help consumers to distinguish between the signs on a conceptual level, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public. As stated above in section c) 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 844 264. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Sam GYLLING

Holger Peter KUNZ

Katarzyna ZANIECKA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.