OPPOSITION No B 2 556 432

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

a g a i n s t

Jen Gilpin, Torstraße 161, 10115 Berlin, Germany (applicant), represented by JBB Rechtsanwälte Jaschinski Biere Brexl Partnerschaft mbB., Christinenstr. 18/19, 10119 Berlin, Germany (professional representative)

On 11/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 556 432 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 and services of European Union trade mark application No 13 719 315 for the word mark ‘DSTM’. The opposition is based on European Union trade mark registration No 4 986 493 and European Union trade mark registration No 2 956 985 . 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.

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 European Union trade mark registration No  2 956 985 .

a) The goods

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

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers.

The contested goods and services are the following:

Class 18: Luggage, bags, and wallets made out of leather.

Class 25: Clothing; headgear; footwear; lingerie; trousers; leggings; stockings; tights; garters; underwear; bras; dresses; coats; jackets; shirts; sweaters; tops; skirts; shorts; belts; leather belts; hats; boots and shoes; clothing made out of leather; cuffs made out of leather.

Class 35: Wholesale and retail services, also via the Internet, in the fields of clothing, headgear and footwear, lingerie, clothing and accessories made out of leather, and luggage bags and wallets made out of leather.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Classes 18 and 25

The contested goods in these classes are items that are used to carry things and clothing items. The earlier right covers textiles and household textiles in Class 24 and precious stones and metals and their alloys, jewellery and watches and chronometers in Class 14. The nature of the goods of Classes 18 and 25 and 14 and 24 is different. They also serve completely different purposes. The manufacturer of the goods is different and they are normally distributed through different channels.

The opponent argues the existence of some degree of similarity between the goods at hand, since the goods in Class 24 are the basis for manufacturing the goods in Class 25 and the goods in Class 14 are related to the goods in Class 25, since they all belong to the fashion industry. The Opposition Division does not share this point of view. The mere fact that one product is used for the manufacturing of another is not sufficient in itself to show that there exists similarity between the goods, as the nature, purpose, relevant public and distribution channels of the goods under comparison are quite distinct. Furthermore, the fact that the main commonality between the contested goods in Class 25 and the opponent´s goods in Class 24 is that they are made of textile material is not enough to justify a finding of similarity (31/05/2012, R 1699/2011-4, GO REBEL (fig.) / GO GLORIA ORTIZ (fig.), § 16; 26/07/2012, R 1367/2011-1, PROMO TEXTILE (fig.) / Promodoro, § 17; 01/08/2012, R 2353/2010-2, Refrigue for cold (fig.) / RefrigiWear (fig.) et al., § 26). Also, according to the Opposition Division, there is no degree of similarity between the goods in Classes 14 and 25 either, since although some designers of fashion clothes nowadays also sell accessories under their marks, this is not the rule in the clothing industry and rather applies only to (economically) successful designers.

Therefore, for all the above reasons, all the contested goods are dissimilar to all the opponent´s goods.

Contested services in Class 35

Goods and services, in general, are different in nature, given that services are intangible whereas goods are tangible and they serve different needs. The nature of the products, fundamentally, implies their manufacture and the nature of the services implies the addition of an added value coming from a personal or professional activity. They also have a different purpose; retail services, as the applicant’s, consist, inter alia, in selecting an assortment of goods offered for sale and in offering

a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor

(07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34) and, furthermore, allow consumers to satisfy different shopping needs at one stop.

Here as well, the opponent argues that the services in Class 35 of the contested sign are directed to related fields (Classes 14 and 24) covered by the earlier right. However, the Opposition Division cannot share this view, because, even it is true that the goods covered by the retail services and the specific goods covered by the earlier mark can be similar to various degrees, it is also true that the specific goods have to be identical to the goods which are the subject of the retail services, in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category and this is not the case. Therefore, the Opponent’s argument must be set aside.

We can therefore conclude that the contested services are dissimilar to the opponent´s goods.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition, based on European Union trade mark registration No 2 956 985 must be rejected.

The Opposition Division will continue the examination of the opposition in relation to the earlier European Union trade mark registration No 4 986 493.

a) The goods

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

Class 3: Perfumery and cosmetics.

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.

The contested goods and services are the following:

Class 18: Luggage, bags, and wallets made out of leather.

Class 25: Clothing; headgear; footwear; lingerie; trousers; leggings; stockings; tights; garters; underwear; bras; dresses; coats; jackets; shirts; sweaters; tops; skirts; shorts; belts; leather belts; hats; boots and shoes; clothing made out of leather; cuffs made out of leather.

Class 35: Wholesale and retail services, also via the Internet, in the fields of clothing, headgear and footwear, lingerie, clothing and accessories made out of leather, and luggage bags and wallets made out of leather.

Some of the contested goods and services are identical or similar to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to the goods of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) 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 and services assumed to be identical or similar are directed at the public at large and professionals, at least for the wholesale services. The degree of attention is considered to be average.

c) The signs

	DSTM
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 vast majority of the public will understand the word ‘dustin’, as found in the earlier mark, as a male first name. The sequence of letters ‘dst’ has no meaning for the relevant public though some may take it as a reference to the previous word. Both elements have no meaning in relation to the relevant goods and services and are therefore of normal distinctiveness, this finding is also applicable where ‘dustin’ may not be understood.

The contested sign has no meaning in relation to the relevant goods and services and is therefore of normal distinctiveness.

The element ‘dustin’ is the visually eye-catching and dominant element of the earlier right. The element ‘dst’ is a secondary element due to its size and position within the mark.

Visually and aurally the marks coincide in the sequence of three letters ‘dst’, which is the last and secondary element of the earlier right. They differ in the dominant and first verbal element of the earlier right ‘dustin’ and in the last letter ‘M’ of the contested sign. They also differ in colour and typeface. As the signs only coincide in the sequence of three letters ‘dst’, which is the secondary element of the earlier right, they are visually and aurally similar to a low degree.

Conceptually, a significant part of the public will understand ‘dustin’ of the earlier right as a male first name and the letter combination as a reference to this name. The contested sign on the other hand, has the concept of the letters it represents and as such the signs are conceptually not similar. For the public for which the word ‘dustin’ is meaningless, the earlier sign conveys no meaning as a whole and the same conclusion is maintained.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) Global assessment, other arguments and conclusion

The goods and services assumed to be identical or similar are directed at the public at large and professionals whose degree of attention during purchase is average. The signs are visually and aurally similar to a low degree whilst they are conceptually not similar.

Although the signs coincide in the sequence of letters ‘dst’, there is no likelihood of confusion as this element is secondary within the overall impression given by the earlier mark and it is only part of the contested sign. This coincidence is not sufficient to lead to a likelihood of confusion on the part of the public, which will focus its attention on the first and dominant verbal element of the earlier mark, ‘dustin’. This is because the public reads from left to right, which makes the initial part of the sign the one that first catches the attention of the reader and therefore has a greater impact than the other elements.

Generally in clothes shops, customers can themselves either choose the clothes 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 of clothing 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). This premise is also applicable to the goods in Class 18 since these are goods that are heavily scrutinised before purchase as well as the related services in Class 35. Therefore, the visual differences between the signs caused by the distinctive verbal and dominant element ‘dustin’ of the earlier right and the letter ‘M’ of the contested sign are particularly relevant when assessing the likelihood of confusion between them.

For all of the above, the Opposition Division considers that the signs in question have blatant differences that enable the relevant consumers to safely distinguish between them.

Considering all the above, even assuming that the goods and services are identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

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

María Clara IBÁÑEZ FIORILLO

Sylvie ALBRECHT

Vanessa PAGE

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.