OPPOSITION No B 2 611 294

Pm Retail AS, Post Office Box 516 Sentrum, 3504, Hønefoss, Norway (opponent), represented by Larsen & Birkeholm A/S, Banegårdspladsen 1, 1570, København V, Denmark (professional representative)

a g a i n s t

Mohr Design UG (haftungsbeschränkt), Prinzenstraße 85F, 10969, Berlin, Germany (applicant), represented by Baumgartenbrandt, Friedrichstr. 95, 10117, Berlin, Germany (professional representative).

On 18/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 611 294 is partially upheld, namely for the following contested goods and services:

Class 25: Clothing; millinery; footwear.

Class 42: Dress designing.

2. European Union trade mark application No 14 427 223 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 427 223 for the figurative mark . The opposition is based on international trade mark registration No 1 082 943 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(a) and (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.

a) The goods and services

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

Class 25: Clothing, footwear, headgear.

After a limitation filed by the applicant on 24/04/2018, the contested goods and services are the following:

Class 24: Fabrics for textile use; printed textile piece goods.

Class 25: Clothing; millinery; footwear.

Class 26: Accessories for apparel, sewing articles and decorative textile articles.

Class 42: Dress designing.

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 24

The contested fabrics for textile use; printed textile piece goods and the opponent’s goods in Class 25, namely clothing, footwear, headgear have different natures, purposes and methods of use, and they are not usually distributed through the same channels. Moreover, they are neither complementary nor in competition and the relevant public does not expect them to be produced or provided by the same undertakings. In particular, with respect to the opponent’s clothing in Class 25, the main point of contact with textile goods in Class 24 is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, for protection and/or fashion, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, fabrics for textile use; printed textile piece goods are considered dissimilar to the opponent’s goods in Class 25.

Contested goods in Class 25

The contested clothing; millinery; footwear are identically contained in both lists of goods (including synonyms).

Contested goods in Class 26

The contested goods in this class are accessories for apparel (e.g. lace, ribbons or hooks), sewing articles (such as sewing needles or pin cushions) and decorative textile articles (e.g. textile ribbons for gift wrapping or rosettes of textile materials). These are either goods used for dressmaking or goods used for decorating objects or interiors/exteriors. On the other hand, the opponent’s goods in Class 25, as already mentioned above, are consumer products worn by people for protection against the elements and as fashion articles. The mere fact that the contested goods could be used in combination with clothing or that they can be parts of some articles of clothing, footwear or headgear is insufficient for a finding of similarity. They are not complementary, in the sense that one is indispensable for the other and that consumers might think that the same company is responsible for their production. The nature, purpose and method of use of the goods compared are clearly different. The goods also differ in their relevant consumers and usual commercial origin. Therefore, these goods must be considered dissimilar.

Contested services in Class 42

The contested dress designing is similar to a low degree to the opponent’s clothing in Class 25, as they usually coincide in producer/provider and relevant public.

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 found to be identical or similar to a low degree are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

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 at issue are stylized depictions of a verbal element formed by the letters ‘PM’.

In the earlier mark, the letters are bold red and the ‘P’ is depicted in upper case whereas the ‘m’ is in lower case. Both letters are rather thin and slightly slanting to the right. The shape of the letter ‘m’ is close to standard. The shape of the letter ‘P’ is slightly more fanciful: the bowl is lower than usual and goes slightly beyond the stem, as if it were handwritten.

In the contested sign, the letters are in black upper case and the ‘M’ has a triangular device above it, which is a commonplace element considered non-distinctive.

For a part of the public, the verbal element ‘PM’ has no meaning in relation to the goods at issue. However, it is not excluded that another part of the public would perceive the letters as the abbreviation ‘pm’ of ‘post meridiem’ which is widely used particularly in English but also in other languages to refer to the time after noon namely the afternoon or the evening. ‘PM’ is also the common abbreviation for ‘Prime Minister’ in English. Those meanings do not impair the distinctiveness of the verbal element in relation to the goods at issue. As regards the former meaning of ‘post meridiem’, even if clothes may be intended for, specifically, the afternoon, the evening or the night, they are not referred to as ‘pm’ (or ‘p.m.’) clothing.

Visually, the signs coincide in the verbal element ‘PM’. The signs only differ in the stylization of these letters, which are not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal elements to the attention of the public, and the device of the contested sign, which is non-distinctive. Therefore, the signs are visually highly similar.

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 ‘PM’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, for a part of the public, 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. However, it is not excluded that a part of the public, at least on hearing the names of the signs, would perceive the letters as the abbreviation ‘p.m.’ of ‘post meridiem’ or ‘prime minister’. Therefore, for that part of the public, the signs are conceptually identical.

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 and services 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

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings.

In the present case, the goods and services that have been found identical and similar to a low degree are directed at the public at large, whose degree of attention is average. The degree of distinctiveness of the earlier mark is normal.

The signs have been found visually highly similar and aurally and conceptually identical. For the part of the public which will not associate the signs with any meaning, a conceptual comparison is not possible.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 082 943 designating the European Union. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree 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) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the goods are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

José Antonio GARRIDO OTAOLA

Valeria ANCHINI

Aldo BLASI

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.