OPPOSITION No B 2 443 250

El Corte Inglés, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Skechers U.S.A., Inc. II, 228 Manhattan Beach Blvd., Suite 200, Manhattan Beach, California 90266, United States of America (applicant), represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United Kingdom (professional representative).

On 17/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 443 250 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 Community trade mark application No 13 245 221. The opposition is based on Community trade mark registrations No 8 459 307 and No 8 459 331. 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 signs

CTM No 8 459 307 CTM 8 459 331	GO PILLARS
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Visually, earlier mark (1) consists of a figurative device with the overall shape of a rectangle, composed of a highly stylised, complex set of black lines with slightly rounded edges and, underneath, the verbal elements ‘GLORIA ORTIZ’, written in standard upper case script. Earlier mark (2) is a figurative mark with the overall shape of a rectangle, composed of a highly stylised, complex set of black lines with slightly rounded edges. The figurative elements of the earlier marks, at first glance, appear to represent an ornament, which will be perceived as a decorative pattern. The contested sign is a word mark composed of two verbal elements, ‘GO PILLARS’.

When comparing the earlier mark (1) with the contested sign, the words ‘GLORIA ORTIZ’, on the one hand, and ‘GO PILLARS’, on the other, the signs differ in length and letter sequence. The coincidence in the letters ‘G’, ’O’, ‘I’, ‘L’, ‘A’, ‘R’ does not give rise to any similarity overall since only the letter ‘G’ is positioned in the same first place, however, the position of the remaining letters, which are also mixed with others, set them clearly apart. As regards the figurative device, it appears to represent an ornament. The opponent argues that the relevant public will read this sign as the word ‘GO’. However, the black lines which could be perceived as the letters ‘G’ and ‘O’ are intertwined up into their central parts. In contrast to the rounded letters ‘G’ and ‘O’ of the contested sign, which in a standard typeface appear taller and less wide, the figurative device consists of straight lines (with slightly rounded edges) which appear wider and less tall. In addition, the depiction of two rows of lines detracts from the sign’s interpretation as representing letters which from top to bottom would read ‘GO OG’, all the more so as the bottom row’s letter ‘G’ of ‘OG’ is inverted. Therefore, there is no visual similarity between the signs.

As regards the earlier mark (2), it is stylised to such an extent that it is not so expected that the relevant public will read the word ‘GO’ when perceiving the sign. As stated above, the stylisation of the figurative element of the earlier mark, if based on the elements ‘GO OG’, is so distinct from these letters written in a standard typeface, in particular when considering the words are portrayed one above the other, that the Opposition Division does not find any relevant visual similarity in the overall impression of the conflicting signs.

Aurally, the relevant public will refer to the earlier mark (1) exclusively as ‘GLORIA ORTIZ’, most commonly pronounced in five syllables, /GLO/RI/A/OR/TIZ/. In contrast, the contested sign contains three syllables, /GO/PI/LLARS/. Furthermore, albeit sharing the letters ‘G’, ’O’, ‘I’, ‘L’, ‘A’, ‘R’, they are all placed in different positions (except for the first letter ‘G’) and mixed with some other letters, then resulting in a very different pronunciation. Therefore, the conflicting signs are aurally dissimilar. As regards the earlier mark (2), the relevant public is unlikely to read the word ‘GO’ or ‘GO OG’. Therefore, an aural comparison of the earlier mark (2) and the contested mark cannot be made.

Conceptually, the element ‘GO’ of the contested sign may be perceived as ‘to move or proceed, esp. to or from a point or in a certain direction’ (information extracted from Collins English Dictionary on 11/12/2015 at www.collinsdictionary.com) from the perspective of the English-speaking public. Since ‘GO’ is a fairly basic English word, it can be reasonably expected that it will be understood by a significant part of the relevant public. The contested sign, in addition to the word ‘GO’, includes the word ‘PILLARS’, being the plural form of the English word ‘pillar’ meaning ‘an upright structure of stone, brick, metal, etc., that supports a superstructure or is used for ornamentation’ as extracted from the same dictionary and on the same date. In the earlier mark (1), the elements ‘GLORIA ORTIZ’ may be perceived as a female first name and surname by the Spanish-speaking part of the public and ‘GLORIA’ may be recognised as a female first name elsewhere. Therefore, the name ‘GLORIA ORTIZ’, on the one hand, and the English words ‘GO PILLARS’, on the other, have nothing in common. They are dissimilar. In the case of the earlier mark (2), while the public in the relevant territory will perceive a concept in the contested sign, to the extent that it includes the verbal elements ‘GO PILLARS’, the other sign lacks any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account that the signs only coincide in irrelevant aspects – the coincidental presence of the letters ‘G’, ’O’, ‘I’, ‘L’, ‘A’, ‘R’ – and also the lack of a conceptual link between them, it is considered that the earlier and the contested signs are dissimilar.

2. Conclusion

Article 8(1)(b) CTMR states that ‘the trade mark applied for shall not be registered: if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’ (emphasis added).

According to Article 8(1)(b) CTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected.

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 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 (7)(d)(ii) CTMIR, 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

Francesca Dinu

Eamonn KELLY

Plamen IVANOV

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.