OPPOSITION No B 2 590 886

Suarez H, S.A., Gran Via, 40 Bis - 3º, 48009 Bilbao (Vizcaya), Spain (opponent), represented by S. Orlando, Asesores Legales y en Propiedad Industrial, S.L., C/ Castelló, 20, 4ºD, 28001 Madrid, Spain (professional representative)

a g a i n s t

Lars van Roon, Arnhemsestraat 56, 6971 AS Brummen, The Netherlands (applicant), represented by Algemeen Octrooi- en Merkenbureau B.V., John F. Kennedylaan 2, 5612 AB Eindhoven, The Netherlands (professional representative).

On 23/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 590 886 is upheld for all the contested goods.

2. European Union trade mark application No 14 337 612 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 337 612. The opposition is based on, inter alia, European Union trade mark registration No 9 105 768. The opponent invoked Article 8(1)(b) and Article 8(5) 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 9 105 768.

1. The goods and services

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

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

Class 18: Leather and imitation 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, expressly excluding stockings, tights and socks for ladies.

Class 35: Advertising; business management; business administration; office functions, in particular wholesaling and retailing in shops and via global computer networks of clocks and watches, chronometric instruments, silverware, jewellery and precious stones.

Following the limitation of the list of goods applied for under the contested sign on 23/11/2015, the contested goods are the following:

Class 18: Backpacks; leather bags and wallets; bags made of imitation leather; wallets; umbrellas; purses; suitcases.

Class 25: Clothing; footwear; hats; belts [clothing].

Contested goods in Class 18

The contested backpacks; leather bags and wallets; bags made of imitation leather; wallets; purses; suitcases are included in the broad category of, or overlap with, the opponent’s goods made of these materials and not included in other classes [Leather and imitation leather]. Therefore, they are identical.

Umbrellas are identically contained in both lists of goods and services.

Contested goods in Class 25

Footwear is identically contained in both lists of goods and services.

The contested clothing includes, as a broader category the opponent’s clothing, expressly excluding stockings, tights and socks for ladies. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested hats; belts [clothing] are included in the broad categories of the opponent’s headgear and clothing, expressly excluding stockings, tights and socks for ladies, respectively. Therefore, they 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 degree of attention is deemed average.

3. The signs

ARISTOCRAZY	THE ARISTOCRAT
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 Italian-, French- and Spanish-speaking parts of the relevant public.

The earlier mark is a word mark which has no element that could be considered clearly more distinctive or more eye-catching (dominant) than other elements.

The contested sign is also a word mark composed of the English definite article ‘THE’ and the English noun it defines, ‘ARISTOCRAT’. ‘THE’ is a very basic word and it can be reasonably assumed that a significant part of the analysed public, at least, will recognise and understand as such the English definite article. The element ‘THE’ in the contested sign has a purely syntactical role for this part of the public and is, therefore, less distinctive than the remaining elements. Consequently, its impact is limited when assessing the likelihood of confusion between the marks at issue.

Visually and aurally, the signs coincide in the verbal sequence ‘A-R-I-S-T-O-C-R-A’ and, irrespective of the different pronunciation rules in different languages of the analysed public, its corresponding sounds. The signs differ in their respective final letters and corresponding sounds, namely ‘Z-Y’ in the earlier mark an ‘T’ in the contested sign as well as in the letters and corresponding sounds of the additional element ‘THE’ of the contested sign which has no counterpart in the earlier mark.

Therefore, the signs are visually and aurally highly similar.

Conceptually, given the pronunciation of the earlier mark by the analysed public and its ensuing closeness with the Italian, French and Spanish words, ‘aristocrazia’, ‘aristocratie’ and ‘aristocracia’, respectively, it is reasonable to assume that at least part of said public will perceive the word ‘ARISTOCRAZY’ as a misspelling of the English word ‘aristocracy’ or as the actual English equivalent of the aforementioned Italian, French and Spanish words and attribute to these the same meaning, namely aristocracy (a privileged class of people usually of high birth; the nobility). Therefore, contrary to the opinion of the applicant, part of said public, at least, will not perceive the earlier mark as the contraction of ‘ARISTO’ and the word ‘CRAZY’, not a basic English word, and will not therefore perceive the meaning of the latter, namely insane or stupid, and thus a differentiating concept.

A significant part of the analysed public will perceive the word ‘ARISTOCRAT’ in the contested sign as the English equivalent of the Italian, French and Spanish words ‘aristòcrate’ and aristocràtico, aristocrate’ and ‘aristócrata’, respectively, all meaning a member of the aristocracy; a noble.

Taking into account that the element ‘THE’ in the contested sign will merely be perceived as the English definite article, with little distinctive character, used to define the following word, namely the distinctive noun ‘ARISTOCRAT, it follows from all the foregoing that for part of the analysed public, the signs refer to very closely related concepts and are therefore highly 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the contested goods and some of the opponent’s goods are identical and the signs are visually, aurally and conceptually highly similar. The distinctiveness of the earlier mark is deemed normal and the attention of the relevant public average.

In view of the foregoing and taking further into account that the public only rarely has the chance to directly compare two trade marks and has to rely on its imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54), the Opposition Division considers that there is a likelihood of confusion on the part of the Italian-, French- and Spanish-speaking part of public.

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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 105 768. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 9 105 768 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8 (5) EUTMR.

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 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Sandra IBAÑEZ

Martina GALLE

Benoit VLEMINCQ

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.