OPPOSITION No B 2 658 873

CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent)

a g a i n s t

Andrea de Poli, Quartiere Europa 5, 35014 Fontaniva, Italy (applicant), represented by Ufficio Veneto Brevetti, Via Sorio 116, 35141 Padova, Italy (professional representative).

On 16/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 658 873 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 European Union trade mark application No 14 799 522 for the word mark ‘ALEXANDER SMITH’. The opposition is based on Benelux trade mark application No 1 319 328 for the word mark ‘Alexander’. 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Clothing; footwear; headgear; swimwear; sportswear; leisurewear.

The contested goods are the following:

Class 25: Footwear; Pumps [footwear]; Footwear for women; Footwear for men; Insoles for footwear; Leisure shoes; Dress shoes; Flat shoes; Leather shoes; Canvas shoes; High-heeled shoes; Casual footwear; Clothing; Casualwear; Hats; Caps [headwear].

Class 26: Shoe laces.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those 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 assumed to be identical are directed at the public at large. The degree of attention is average.

c) The signs

Alexander	ALEXANDER SMITH
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

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 verbal element ‘Alexander’ in the earlier mark and the contested sign will be seen as a very common male first name, widely used and popular in the relevant territory, even if its equivalent in French is ‘Alexandre’.

The second element of the contested sign, ‘SMITH’, will be seen as a surname of English origin, which is not particularly common in the Benelux.

The opponent argues that ‘ALEXANDER’ is the contested sign’s ‘dominant and memorable’ element and the verbal element ‘SMITH’ will be ‘simply an addition’ thereto. The opponent did not submit any evidence in this regard. As this opponent’s claim is purely subjective it must be set aside as unfounded.

In addition, surnames have in principle a higher intrinsic value as an indicator of origin of goods (and services) than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family link). Therefore, in view of the fact that ‘Alexander’ is a common male first name, the second verbal element of the contested sign, being a surname of a foreign origin and uncommon in the relevant territory, has a higher distinctive value than the first one.

Visually and aurally, the signs coincide in ‘Alexander’. They differ in the second verbal element ‘SMITH’ of the contested sign, which is more distinctive than the first element.

Therefore, bearing in mind the distinctiveness of the signs’ verbal elements, and their impact according to the explanations above, the signs are visually and aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the same male first name, being this very common, as explained above. They differ in the second verbal element of the contested sign which is more distinctive than ‘Alexander’/‘ALEXANDER’. It is therefore considered that they are conceptually similar to a very low degree.

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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods

and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods are assumed to be identical and they target the public at large whose degree of attention is average. The signs are visually and aurally similar to a below average degree, and conceptually they are similar to a very low degree. Furthermore, the earlier mark has a normal degree of distinctiveness.

The opponent highlights that ‘the Smith element … will be read second and thus, be given less prominence’ and ‘the relevant consumers will emphasize their pronunciation of the first element rather than the second one’. It is true that the earlier mark is contained at the beginning of the contested sign and that the beginning of a sign is in general the part that is most easily recollected. However, there are circumstances which justify an exception to this principle. The Opposition Division holds the view that the relevant consumer will not confuse these signs. As it was explained the name ‘Alexander’ is quite common. This name constitutes the entire earlier mark. The contested sign, however, while beginning with this common name also contains the distinguishing surname ‘SMITH’ which is not common in the Benelux countries. Therefore, the opponent’s claim must be set aside.

In the particular circumstances of this case, which include the absence of an enhanced degree of distinctiveness of the earlier mark, the relevant consumer is most likely to see the coincidence of ‘Alexander’ in both marks as the result of pure chance. Since the opponent has chosen to distinguish its products using a common male name, there would be no reason for the consumer to assume that the contested sign is connected in any way to the opponent’s mark. The Opposition Division considers that in the case at hand, consumers will merely see the earlier mark as a very common male name and the contested sign as referring to a specific person, perhaps the designer of the products at issue. Therefore, it is of the opinion that the coincidence in the verbal element ‘Alexander’/’ALEXANDER’ will not lead the public to infer automatically that the goods marketed under the signs are provided by the same or economically linked undertakings.

The opponent refers to a previous national decision to support its arguments, namely the decision of the Benelux Office for Intellectual Property (i.e. 05/08/2016, AVERHAMI Boaz / B 0883527 vs CKL Holdings N.V. / D 1319237). However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous case referred to by the opponent is not relevant to the present proceedings as it concerns different first names and surnames. Therefore, since the cases referred to involve different signs and different goods and/or services, the same reasoning cannot be expected to be followed or the same outcome reached. Furthermore, the opponent did not submit a copy of this decision or any other evidence related to said decision. In view of the above, the opponent’s argument must be set aside.

The opponent, referring to regional customs in the Benelux countries, also highlights that the verbal element ‘Alexander’ could be perceived as a surname. It argues that ‘in Belgium, the last name is listed first whereas in the Netherlands, the first name will be mentioned first’. First, it should be noted that the opponent did not provide any evidence in this regard. Second, the earlier mark is composed solely of one verbal element ‘Alexander’ and the contested sign consists of two verbal elements ‘ALEXANDER SMITH’. With regard to the latter it is highly unlikely that the public will perceive ‘SMITH’ as a first male name because it will be seen as a surname of a foreign origin as explained above. Likewise, this opponent’s claim must be set aside.

Therefore, considering all the above, 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

Helen Louise MOSBACK

Michal KRUK

María del Carmen SUCH SÁNCHEZ

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.