OPPOSITION No B 2 437 880

Impetus Portugal-Têxteis, S.A., Rua da Fabrica, 45 Apúlia, 4740-141 Esposende, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Galdino Danieli, Via Regina Cornaro 23, 31031 Caerano di San Marco (TV), Italy (applicant), represented by Ufficio Veneto Brevetti, Via Sorio 116, 35141 Padova, Italy (professional representative).

On 29/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 437 880 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 132 105. The opposition is based on European Union trade mark registration No 2 497 543. 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 25: Articles of clothing, footwear and headgear.

The contested goods are the following:

Class 18: Leather and imitations of leather, animal skins and hides; Trunks and travelling bags; Umbrellas, big umbrellas and walking sticks; Whips, harness and saddlery.

Class 25: Footwear; Casual footwear; Ski boots; Ankle boots; Clothing, excluded underwear; Headgear.

Earlier European Union trade mark No 2 497 543 is registered for the entire class heading of Class 25 of the Nice Classification. It was filed on 11/12/2001. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks 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 7^th edition.

Consequently, in order to take account of the entire alphabetical list in Class 25 of the earlier EUTM, the Opposition Division will compare the contested goods with both (i) the general indications specified and (ii) any items in the alphabetical list that do not fall within the natural and usual meaning of the general indication in Class 25 of the earlier mark.

In the case of Class 25, the Opposition Division has identified the following items in the alphabetical list covered by the earlier European trade mark that do not fall within the natural and usual meaning of this general indication:

Class 25: Boot uppers; cap peaks; fittings of metal for shoes and boots; footwear uppers; hat frames [skeletons]; heelpieces for boots and shoes; heelpieces for stockings; heels; inner soles; pockets for clothing; non-slipping devices for boots and shoes; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots [shoes]; tips for footwear; welts for boots and shoes.

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

Articles of clothing, headgear and footwear in Class 25 protected by the earlier mark are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested leather and imitations of leather; animal skins and hides in Class 18 refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The goods under comparison are sold in different outlets, are of a different nature and serve a different purpose from articles of clothing, headgear and footwear. Therefore, the contested leather and imitations of leather; animal skins and hides are dissimilar to the opponent´s articles of clothing, footwear, headgear (including those items in the alphabetical list of Class 25 that do not fall within the natural and usual meaning of the general indication which were listed above).

Trunks are large packing cases or boxes that clasp shut, used as luggage or for storage; umbrellas and big umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; walking sticks are canes or other staffs used as aids for walking; whips are instruments used for driving animals; harnesses are the gear or tackle with which a draft animal pulls a vehicle or implement; and saddlery is equipment for horses, such as saddles and harnesses. The nature of these goods is very different from that of articles of clothing, headgear and footwear in Class 25. They serve very different purposes (storage, protection from rain/sun, assistance with walking, aid in the control and/or riding of animals). They do not usually have the same retail outlets and are not usually made by the same manufacturers. Therefore, the contested trunks; umbrellas, big umbrellas and walking sticks; whips, harness and saddlery are dissimilar to the opponent´s articles of clothing, footwear, headgear (including those items in the alphabetical list of Class 25 that do not fall within the natural and usual meaning of the general indication which were listed above).

The same reasoning applies to the contested travelling bags. These goods are considered different to articles of clothing, headgear and footwear. Travelling bags are for carrying things when travelling and do not satisfy the same needs as articles of clothing, headgear and footwear. 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. Therefore, the contested travelling bags are dissimilar to the opponent´s articles of clothing, footwear, headgear (including those items in the alphabetical list of Class 25 that do not fall within the natural and usual meaning of the general indication which were listed above).

Contested goods in Class 25

Footwear; headgear are identically contained in both lists of goods despite the difference in their wordings.

The contested casual footwear; Ski boots; Ankle boots are included in the broader category of the opponent´s articles of footwear. The goods are therefore identical.

The contested clothing, excluded underwear is included in the broader category of the opponent´s articles of clothing therefore the goods are identical.

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 are directed at the public at large whose level of attention is average.

3. The signs

IMPETUS	IMPUT
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).

Both signs are word marks consisting of one single element, ‘IMPETUS’ in case of the earlier mark and ‘IMPUT’ for the contested mark. According to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (judgments of 20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

The earlier mark ‘IMPETUS’ is a term which means something that makes a process or activity happen or happen more quickly for the English-speaking part of the public and for a part of the German consumers as the word exists as such in German. It might also be understood by some other consumers of the relevant territory as close variations of this term exist in other European languages (‘ímpeto’ in Portuguese, ‘impetuos’ in Romanian, ‘ímpetu’ in Spanish and ‘impeto’ in Italian). For another part of the relevant public, the sign conveys no meaning. Be as it may be, the term ‘IMPETUS’ has no meaning in relation to the relevant goods. Therefore, it has an average degree of distinctive character.

The contested sign ‘IMPUT’, as such, refers for the Romanian speaking-part of the public to the present tense singular form of the verb ‘impute’ which means to attribute in English. For the remaining consumers, the contested sign´s term conveys no meaning. Since it has no relation with the relevant goods, it has a normal degree of distinctive character.

The marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs merely coincide in the string of letters ‘IMP’, *T**’ and the letter ‘U’. On the other hand, the signs differ in the letters ‘e’ and ‘s’ included in the earlier mark. Although both signs include the letter ‘T’ respectively, they are placed in different positions within both signs. Therefore, the signs are visually similar to a low 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 /imp/, /*t**/ and /u/. The pronunciation differs in the sound of the letters ‘e’ and ‘s’ included in the earlier mark. Although both signs include the letter ‘t’ respectively, they are placed in different positions within both signs forming two different syllables, /tus/ in the case of the earlier mark and /put/ within the contested sign. The earlier mark contains three syllables /im-pe-tus/ while the contested sign contains two syllables /im-put/ therefore their rhythm and intonation is different. Therefore, the signs are similar to a low degree aurally.

The opponent points out that it is well-known that the initial part of a trademark is the one which is the most easily recalled by the public. It has to be noted that in word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30). Nevertheless, this perception mostly depends on the circumstances of the case, in particular, the length of the signs (in the present case, the earlier mark contains seven letters whereas the contested sign includes five), the syllabic distribution within both signs and not on a set rule.

Conceptually, the earlier mark ‘IMPETUS’ is a term which means something that makes a process or activity happen or happen more quickly for the English-speaking part of the public and for a part of the German consumers as the word exists as such in German.

The earlier mark might also be understood by some other consumers of the relevant territory as close variations of this term exist in other European languages (‘ímpeto’ in Portuguese, ‘impetuos’ in Romanian, ‘ímpetu’ in Spanish and ‘impeto’ in Italian). For another part of the relevant public, the sign conveys no meaning.

The contested sign ‘IMPUT’, as such, refers for the Romanian speaking-part of the public to the present tense singular form of the verb ‘impute’ which means to attribute in English. For the remaining consumers, the contested sign´s term conveys no meaning.

For the Romanian speaking part of the public, as the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.

For a part of the public in the relevant territory, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

For the remaining part of the public, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

5. Global assessment, other arguments and conclusion

The Court has set out the essential principle that 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

The interdependence of those factors is expressly referred to in recital 8 in the preamble to the EUTMR, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (10/09/2008, T‑325/06, Capio, EU:T:2008:338, § 72 and the case-law cited).

The contested goods are partially identical and partially dissimilar to the goods of the earlier mark, the degree of attention of the relevant public is average and the distinctiveness of the earlier mark is normal as explained above.

In the present case, it is considered that the differences between the signs are enough to counteract the similarities between them. The fact that they merely share some letters, where the common ‘t’ is placed in different positions within both signs is insufficient to conclude a likelihood of confusion between the marks in comparison, when seen as a whole, despite the identity of some of the goods at issue. There exist important visual, aural and, for a part of the public, conceptual differences between the signs, which make the consumers notice them and consequently to distinguish them.

It has also to be noted that in clothes shops, and the same applies to footwear and headgear, customers can themselves either choose the items they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, in the present case, the visual differences between the signs are particularly relevant when assessing the likelihood of confusion between them.

The opponent alleged the interdependence principle stating that the almost identity of signs and the similarity of goods in the present case should weigh in favour of finding that the marks are confusingly similar. However, it has to be noted that this principle has already been taken into account by the Opposition Division when assessing the existence of a likelihood of confusion as stated above. The coincidences identified between the signs cannot, in the present case, outweigh the strong differences resulting from the different endings of the signs and the fact that they are of different lengths.

The opponent refers to a previous decision of the Office to support its arguments, namely, decision of 15/12/2015, B 2 496 654. 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 EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the case mentioned by the opponent, the marks under comparison were ‘YOGGI’ vs ‘Yogiveg’ which are not comparable to the situation in the current proceedings since in the previous decision the contested sign was a figurative mark where ‘veg’ was readily perceptible as a weak component. Therefore, the previous case referred to by the opponent is not relevant to the present proceedings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Carmen SANCHEZ PALOMARES

Gailė SAKALAITĖ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.