OPPOSITION No B 2 700 709

K&L GmbH & Co. Handels-KG, Paradeisstr. 67, 82362 Weilheim, Germany (opponent), represented by Fechner Rechtsanwälte partmbB, Rathausstraße 12, 20095 Hamburg, Germany (professional representative)

a g a i n s t

Kan Trademark Sp. z o.o., Wiączyńska 8A, 92-760 Łódź, Poland (applicant), represented by Aleksandra Młoczkowska, Baker McKenzie Krzyżowski i Wspólnicy sp. k. rondo ONZ 1, 00-124 Warsaw, Poland (professional representative).

On 31/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 700 709 is partially upheld, namely for the following contested goods:

Class 14: All the contested goods in this class, except for precious metals, and imitations thereof.

Class 18: All the contested goods in this class, except for umbrellas and parasols.

Class 25: All the contested goods in this class.

2. European Union trade mark application No 14 879 506 is rejected for all the goods as reflected under 1. of this dictum. It may proceed for the remaining goods, namely:

Class 14: Precious metals, and imitations thereof.

Class 18: Umbrellas and parasols.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 14 879 506, . The opposition is based on European Union trade mark registration No 1 916 519, ‘TANTUM’, and European Union trade mark registration No 10 568 822, ‘Tantum O.N.’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE OF EUTM No 1 916 519

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark No 1 916 519.

The request was filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 26/06/2019 the opponent was given two months to file the requested proof of use. This time limit was extended until 26/10/2019.

The opponent did not submit any evidence concerning the use of the earlier European Union trade mark registration No 1 916 519 on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR.

The examination of opposition will continue on the basis of European Union trade mark registration No 10 568 822.

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 the following:

Class 14: Costume jewellery; Clocks.

Class 18: Leather goods, Included in class 18; Cases, bags, pouches, rucksacks.

Class 25: Clothing, including socks and stockings; footwear, headgear; Belts.

The contested goods are the following:

Class 14: Jewels; Gemstones, pearls and precious metals, and imitations thereof; Ornaments [jewellery, jewelry (Am)]; Jewellery ornaments; Imitation jewellery ornaments.

Class 18: Umbrellas and parasols; Luggage, bags, wallets and other carriers; Straps (Leather -); Straps made of imitation leather.

Class 25: Hats; Footwear; Clothing.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 14

The contested jewels; gemstones, pearls, and imitations thereof; ornaments [jewellery, jewelry (am)]; jewellery ornaments; imitation jewellery ornaments are at least similar to the opponent’s costume jewellery in Class 14. All these goods belong to the same sector of jewellery articles and some of them are even identical (e.g. the contested ornaments [jewellery, jewelry (am)] overlap with the opponent’s costume jewellery in Class 14). These goods target the same relevant public and may originate from the same undertakings and sold through the same channels of distribution.

However, the contested precious metals, and imitations thereof are considered to be dissimilar to the opponent’s goods in Class 14. The contested goods are raw materials for use in industry rather than for direct purchase by the final consumer. On the other hand, the opponent’s goods in this class are finished goods. The fact that precious metals and alloys are used in the production process of the opponent’s jewellery articles is not sufficient to render them similar. Their natures, purposes, usual origins and distribution channels are different and they are not in competition or complementary.

The same conclusion applies when comparing the contested precious metals, and imitations thereof with all the other goods of the opponent, namely the opponent’s goods in Class 18 (goods made of leather and items used for transporting personal goods) and in Class 25 (clothing, headgear and footwear). Their nature, purpose and method of use are different. They do not have the same usual origins, distribution channels and are neither in competition, nor complementary.

Contested goods in Class 18

The contested luggage, bags, wallets and other carriers; straps (leather -); straps made of imitation leather and the opponent’s bags in Class 18 are either identical (because e.g. bags are identically contained in both lists or the contested luggage includes, or overlaps with, the opponent’s bags) or at least similar as they may be produced by the same undertakings; they are usually sold through the same distribution channels and target the same relevant public.

However, the contested umbrellas and parasols are dissimilar to all the opponent’s goods. Umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod. Parasols are light umbrellas carried for protection from the sun. They have different natures and purposes from the opponent’s goods (protection from rain/sun versus covering/protecting the human body, personal adornment or time indication). They do not usually have the same manufacturers or retail outlets. Moreover, the goods are neither in competition nor complementary. The opponent’s leather goods, included in class 18 do not provide a clear indication of what goods are covered, as it is simply stated what the goods are made of, and not what the goods are. This indication covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors. Therefore, it cannot be assumed that these goods and the contested goods are produced by the same companies, that their methods of use coincide, or that they share the same distribution channels or that they are in competition or complementary.

Contested goods in Class 25

The contested hats; footwear; clothing are identical to the opponent’s clothing, including socks and stockings; footwear, headgear, either because they are identically contained in both lists or because the opponent’s goods include the contested goods.

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 found to be identical or at least similar are directed at the public at large.

The degree of attention may vary from average to relatively high, depending on the exact nature of the goods purchased and their price. In particular, jewellery items in Class 14 may include luxury items or items intended as gifts. In its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. Therefore, a relatively high degree of attention on the part of the consumer may be assumed in relation to these goods.

c) The signs

Tantum O.N.
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 earlier mark is composed of the word ‘Tantum’ followed by ‘O.N.’. Neither of these elements has a meaning. Therefore, they are equally distinctive in relation to the relevant goods.

The contested sign is figurative. Despite the stylisation of letters, the word ‘TATUUM’ is discernible. This word has no meaning in English and is distinctive in relation to the relevant goods. The graphical representation of the letters is not particularly striking and will not attract the consumers’ attention away from the verbal element. Therefore, the stylisation of letters has less impact on the public that will more easily refer to the sign by its verbal element.

The signs have no elements that could be considered clearly more visually dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

The applicant argues that the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public and that what matters in the assessment of the visual similarity of two marks is, rather, the presence, in each of them, of several letters in the same order (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-83; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

However, the signs of the case referred to by the applicant are not comparable to those in the present case. Despite stylisation, the consumers are likely to intuitively identify the word ‘TATUUM’ in the contested sign. This word and the first word ‘TANTUM’ of the earlier mark share the same initial, middle and ending sequences of letters ‘TA*TU*M’ interrupted by the letter ‘N’ after the sequence of the letters ‘TA’ in the earlier mark and the additional letter ‘U’ after the sequence of the letters ‘TU’ in the contested sign. Since the additional letter in the contested sign is the same as the letter preceding it, both ‘TANTUM’ and ‘TATUUM’ end with the sequence ‘UM’ and the sequences of letters ‘TUM’ and ‘TUUM’ create a similar impression and are likely to be pronounced in the same way. Consequently, the differences are not sufficiently striking to outweigh similarities.

Visually, the word ‘TANTUM’ of the earlier mark and the contested sign ‘TATUUM’ share five letters ‘TA*TU*M’. The initial, middle and ending sequences of letters are the same. The words differ in the third letter ‘N’ of ‘TANTUM’ of the earlier mark and in that the letter ‘U’ is doubled in the contested sign. Furthermore, the signs differ in the additional elements ‘O.N.’ of the earlier mark and stylisation of letters of the contested sign. Since the similarities concern the first and longer element of the earlier mark while the differences are confined to the elements and aspects with less impact, it is considered that the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of five letters ‘TA*TU*M’ of the first word ‘TANTUM’ of the earlier mark and of the only word of contested sign ‘TATUUM’. The double ‘U’ of the latter will be pronounced as one sound at least by a significant part of the relevant public. The pronunciation of these words differs in the sound of the additional letter ‘N’ of the word ‘TANTUM’ of the earlier mark, being the third letter of that word. In some languages the pronunciation may be slightly further apart (e.g. in French, the additional letter ‘N’ also affects the pronunciation of the proceeding letter ‘A’). Furthermore, the pronunciation differs in the sound of the additional letters ‘O.N.’ placed at the end of the earlier mark. Therefore, it is considered that the signs are aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning as a whole. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 are partially identical or at least similar and partially dissimilar. The signs are visually and aurally similar to at least an average degree. The conceptual comparison is neutral. The earlier mark has a normal degree of distinctiveness. The public’s level of attention may vary between average and higher than average.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Given that the similarities were found between the word ‘TANTUM’, which is the first element of the earlier mark, and ‘TATUUM’ which is the only verbal element of the contested sign, the additional differentiating elements with less impact are not sufficient to counteract these similarities. The consumers, even if their attention is heightened, could be led to believe that the identical and similar goods bearing the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings.

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 European Union trade mark registration No 10 568 822.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or at least similar 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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michele M. BENEDETTI - ALOISI

Justyna GBYL

Maria SLAVOVA

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.