OPPOSITION No B 2 523 259

Suit Supply B.V., H.J.E. Wenckebachweg 210, 1096 AS Amsterdam, The Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative)

a g a i n s t

Eduardo Francisco Silva Mendes Santos Ferreira, Rua Luís de Camões, Lote 4, 2670 Casaínhos, Portugal (applicant), represented by João Pedro Mendes Ferreira, Rua Ilha de Porto Santo n.º 3, 2670-443 Loures, Portugal (professional representative).

On 17/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 523 259 is partially upheld, namely for the following contested goods:

Class 25: Clothing; footwear; headgear.

2. Community trade mark application No 13 714 101 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 714 101. The opposition is based on, inter alia, Community trade mark registration No 9 738 147. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Community trade mark registration No 9 738 147.

1. The goods and services

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

Class 25: Clothing, footwear, headgear

Class 35: Advertising; business management; business administration; office functions; business assistance with regard to the sale of goods; retail services connected with the sale of leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, clothing, footwear, headgear

Class 40: Treatment of materials; tailoring, sewing.

The contested goods are the following:

Class 3: Perfumes

Class 9: Pince-nez

Class 14: Wristwatches

Class 25: Clothing; footwear; headgear.

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 25

Clothing; footwear; headgear are identically contained in both lists of goods.

Contested goods in Classes 3, 9 and 14

The contested pince-nez in Class 9 and wristwatches in Class 14 are considered to be dissimilar to the opponent’s clothing, footwear and headgear. The nature and the main purpose of these goods are different. The main function of clothing is to dress the human body whilst the main purpose of glasses is to improve eyesight, and jewels are worn for personal adornment. They do not have the same distribution channels and they are neither in competition, nor complementary. The same reasoning applies to the contested perfumes in Class 3 - the main purpose of which is to impart a long-lasting scent to the body. Even though some designers that make fashion clothes nowadays also sell perfumes and fashion accessories (such as glasses and jewellery) under their marks, this is not the rule, and rather applies to (economically) successful designers.

In addition, the contested goods are considered dissimilar also to the rest of the opponent’s goods and services.

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. The degree of attention is considered average.

3. The signs

SUIT UP	SUITCLUB
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 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 Spanish-speaking part of the relevant public.

The earlier mark is a two-word mark, ‘SUIT UP’.

The contested sign is a one-word mark, ‘SUITCLUB’.

In relation to the word ‘club’ in the contested sign, although it will be understood by the Spanish public as ‘a group or association of people with common aims or interests or a commercial establishment in which people can drink and dance’ (dle.rae.es) it has no meaning in connection with the contested goods. Nevertheless, as the public will recognise ‘club’, it will break the contested sign down into ‘suit’ and ‘club’.

In fact, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (see judgment of 13/02/2007, T‑256/04, ‘RESPICUR’, paragraph 57). Therefore, ‘SUIT’ will be perceived as an element in both marks that is meaningless for the relevant public, and the marks at issue have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they coincide in ‘SUIT’. However, they differ in their second elements, ‘UP’ and ‘CLUB’, placed after the coinciding element in the earlier mark and the contested sign, respectively.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‘SUIT’, present in both signs. The pronunciation differs in the sound of the letters ‛UP’ of the earlier sign, which has as its counterpart the word ‘CLUB’ in the contested mark. Therefore, the signs are aurally similar to an average degree.

Conceptually, while the Spanish public will perceive the element ‘CLUB’ of the contested sign and will associate it with the meaning given above, the other sign lacks any meaning in that territory. 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 goods are identical or dissimilar. The marks are visually and aurally similar on account of the coinciding word element ‘SUIT’, placed at the beginning of each sign. Moreover, neither of the signs, as a whole, has a meaning for the relevant public and, consequently, their identical beginnings could lead consumers to believe that the identical goods in question come from the same undertaking or economically linked undertakings.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component, ‘suit’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65.

When the opposition to a Community trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

The proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘SUIT’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. Therefore, this argument will not influence the assessment of likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Community trade mark registration. 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.

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

The rest of the contested goods 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 cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• Community trade mark registration No 3 950 201 for the word mark ‘SUITSUPPLY’, which covers the following goods and services:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising.

Since this mark covers the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Jessica LEWIS

Eamonn KELLY

Gueorgui 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.