OPPOSITION No B 2 443 367

Eve’s Temptation, Inc., 1289 S. El Molino Avenue, Pasadena, California 91106, United States of America (opponent), represented by Urquhart-Dykes & Lord LLP, The Podium, 1 Eversholt Street, London NW1 2DN, United Kingdom (professional representative)

a g a i n s t

Brandforce ApS, Lansen 15, 9230 Svenstrup J., Denmark (applicant), represented by Advokatfirmaet.Dk I/S, Algade 31, 9000 Aalborg, Denmark (professional representative).

On 26/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 443 367 is upheld for all the contested goods, namely:

Class 25: Articles of athletic clothing except swimwear and beachwear for woman; Articles of clothing for athletes except swimwear and beachwear for woman; Articles of clothing for sportswear except swimwear and beachwear for woman; Articles of footwear for sport except swimwear and beachwear for woman; Sports shoes; Sports headgear [other than helmets]; Articles of athletic clothing except swimwear and beachwear for woman.

2. Community trade mark application No 13 044 201 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 13 044 201, namely against all the goods in Class 25. The opposition is based on Community trade mark registration No 11 885 621. 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

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

Class 25: Clothing, except cycle clothing and sports clothing; footwear, except cycle footwear and sports footwear; headgear, except cycle helmets and sports helmets.

The contested goods are the following:

Class 25: Articles of athletic clothing except swimwear and beachwear for woman; Articles of clothing for athletes except swimwear and beachwear for woman; Articles of clothing for sportswear except swimwear and beachwear for woman; Articles of footwear for sport except swimwear and beachwear for woman; Sports shoes; Sports headgear [other than helmets]; Articles of athletic clothing except swimwear and beachwear for woman.

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.

Both the contested and the opponent’s goods are related to clothing, footwear or headgear. The contested articles of athletic clothing except swimwear and beachwear for woman (listed twice); articles of clothing for athletes except swimwear and beachwear for woman; articles of clothing for sportswear except swimwear and beachwear for woman are similar to the opponent’s clothing, except cycle clothing and sports clothing. The contested articles of footwear for sport except swimwear and beachwear for woman; sports shoes are similar to the opponent’s footwear, except cycle footwear and sports footwear. The contested sports headgear [other than helmets] are similar to the opponent’s headgear, except cycle helmets and sports helmets. The compared goods have the same nature and purpose. All these goods are used to cover and protect various parts of the body. They are often found in the same retail outlets. Moreover, many manufacturers and designers will design and produce both goods.

2. The signs

EVE BY EVE’S
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the word ‘EVE’. However, they differ in the element ‘&’ placed at the beginning of the contested sign as well as the word ‘BY’, the ending ‘’S’ and the repetition of the word ‘EVE’ in the earlier mark. As the earlier mark is a word mark, its scope of protection covers depictions in different standard typefaces, including in bold. Therefore, it is irrelevant that the contested sign is depicted in bold typeface.

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 word ‛EVE’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the word ‘BY’ and the repetition of the word ‘EVE’, which is followed by the ending ‘’S’ ‘in the earlier mark. They furthermore differ in the sound of the ampersand (which will be pronounced, depending on the language, as ‘and’, ‘und’, ‘en’, etc.).

Conceptually, the public in the relevant territory will perceive the word ‛EVE’ in both signs as meaning, inter alia, ‛the first woman; mother of the human race, fashioned by God from the rib of Adam’ (information extracted from Collins Dictionaries on 13/01/2016 at http://www.collinsdictionary.com/dictionary/english/eve). To that extent the signs are conceptually similar.

The element ‘&’ in the contested sign will be perceived as the ampersand symbol meaning ‘and’.

The element ‘BY’ of the earlier mark will be perceived as an English preposition, which is widely used in the clothing sector as an indicator of manufacturer.

The apostrophe followed by the letter ‘S’, in the earlier mark, will be understood by the English-speaking part of the public as a possessive marking, indicating that something belongs to ‛EVE’.

Taking into account the abovementioned visual, aural and conceptual coincidences, 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 applicant argues that the word ‘EVE’ has a low degree of inherent distinctiveness, but has not put forward any arguments to support this claim. The Opposition Division considers this word to be of average distinctiveness.

The contested sign has no element that could be clearly considered more distinctive than other elements.

The element ‘BY’ of the earlier mark will be perceived as simply indicating that the name that follows is the name of the manufacturer. The relevant public will therefore not pay as much attention to it as to the other, more distinctive, elements of the mark. Consequently, the impact of this 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

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 found to be similar are directed at the public at large. The degree of attention is average.

6. Global assessment, other arguments and conclusion

The goods are similar.

The signs are visually, aurally and conceptually similar to the extent that they coincide in the word ‘EVE’. The differences lie in the additional word, ‘BY’, the ending ‘’S’ and the repetition of the word ‘EVE of the earlier trade mark and the ampersand symbol ‘&’ placed in the beginning of the contested sign.

The earlier mark has a normal degree of distinctiveness because it has no meaning in relation to any of the goods in question from the perspective of the public in the relevant territory.

As stated above, the additional element, ‘BY’, in the earlier mark is weak for all the relevant goods. Therefore, the relevant public will pay less attention to the weak element ‘BY’ and more attention to the remaining elements, ‘EVE’ and ‘EVE’S’.

The applicant argues that the signs differ significantly in their lengths, which would lead to different visual and aural impressions and make the signs dissimilar. Although the signs differ in length, the Opposition Division notes that the word both signs have in common, ‘EVE’, is contained twice in the earlier mark and its remaining elements ‘BY’ and ‘’S’ are either weak or of secondary importance. The ampersand symbol (‘&’) at the beginning of the contested sign will be pronounced, according to the language, as the word ‘and’, ‘und’, ‘en’, etc., and is not sufficient to differentiate the signs.

Even though the visual perception of the marks in question will generally take place prior to the purchase of goods in Class 25, the additional differing elements in both signs are not sufficiently distinctive or striking to detract the consumers’ attention from the distinctive verbal element that the signs have in common, ‘EVE’, which is contained twice in the earlier mark.

It follows that the element ‘EVE’ significantly influences the overall impression of the signs and is likely to be remembered by the relevant public. Therefore, the differences between the marks are not sufficient to outweigh the similarities in the element ‘EVE’.

In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division considers that the similarities cannot be counteracted by the dissimilarities, and that the public would believe that the similar goods come from the same undertaking or from economically linked undertakings.

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 Community trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Rhys MORGAN

Hasan Oguzhan KARSLI

Julia SCHRADER

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.

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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.