OPPOSITION No B 2 711 904

CKL Holdings N.V., Leeuwenstraat 4, 2000 Antwerp, Belgium (opponent)

a g a i n s t

Little Range GmbH, Zweigstr. 7, 46117 Oberhausen, Germany (applicant), represented by Michalski Hüttermann & Partner Patentanwälte mbB, Speditionstraße 21, 40221 Düsseldorf, Germany (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 711 904 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 981 211, namely against all the goods and services in Classes 25 and 35. The opposition is based on Benelux trade mark registration No 983 964 and UK trade mark registration No 3 160 761. 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 Benelux trade mark registration No 983 964.

1. The goods and services

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

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

Class 35: Provision of information and advice to consumers regarding the selection of products and items to be purchased; advertising particularly services for the promotion of goods; retail services connected with the sale of clothing and clothing accessories; online retail store services in relation to clothing.

The contested goods and services are the following:

Class 25: Clothing; headgear; footwear; gloves [clothing]; boxing shoes.

Class 35: Consultancy and support in the fields of advertising, marketing and sales promotion; public relations services; product demonstrations and product presentations; business consultancy and advisory services; advertising, marketing and promotional services; provision of advertising space, time and media.

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

The term ‘particularly’, used in the opponent’s list of services, indicates that the specific services 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 (see the judgment of 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 25

Clothing; headgear; footwear are identically contained in both lists of goods.

The contested gloves [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested boxing shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

Contested services in Class 35

Advertising services are identically contained in both lists of services, albeit in slightly varying wording and also bearing in mind that the earlier services listed after the term ‘particularly’ are only examples of items included in the broader category that precedes them.

The contested consultancy and support in the fields of advertising, marketing and sales promotion; public relations services; product demonstrations and product presentations; marketing and promotional services; provision of advertising space, time and media are included in, or overlap with, the opponent’s advertising particularly services for the promotion of goods. Therefore, they are identical.

The contested business consultancy and advisory services are similar to a low degree to the opponent’s advertising particularly services for the promotion of goods, as they can have the same purpose and providers and target the same relevant public.

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 and services found to be identical or similar to a low degree are directed at the public at large (e.g. in the case of clothing) and at business customers with specific professional knowledge or expertise (e.g. in the case of consultancy and support in the fields of advertising, marketing and sales promotion, advertising). The degree of attention will vary between average and higher than average depending on the nature or the price of the specific goods and/or services and also considering the impact that the services in Class 35 may have on and the implications that they may have for the business policy of the relevant consumers.

3. The signs

MICHAEL
Earlier trade mark	Contested sign

The relevant territory is the Benelux countries.

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 the word mark ‘MICHAEL’, which is understood throughout the relevant territory as a male given name. Its inherent distinctiveness is normal in relation to the relevant goods and services.

The contested sign is figurative and consists of the verbal elements ‘MICHAEL WALLISCH’, with a figurative element depicting a bird spreading its wings between the two words. There is no element that could be considered clearly more dominant (visually eye-catching) than others.

Although ‘WALLISCH’ is not a common surname in the relevant territory, it will be recognised as one because it is preceded by ‘MICHAEL’. Therefore, the word combination will be perceived as the given name, as explained above, and surname of a person, which is distinctive to an average degree for the relevant goods and services. As regards the figurative element, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal elements will be attributed more trade mark significance in the contested sign.

Visually, the signs coincide in the element ‘MICHAEL’, which is present in both signs. However, this commonality is not sufficient to render the signs ‘highly similar’, as the opponent claims. The signs have different lengths and structures (one seven-letter word in the earlier mark versus two words containing a total of 15 letters in the earlier mark). Furthermore, the contested sign includes a figurative element depicting a bird, which, even if it has less impact (as explained above), will not be completely ignored by consumers. Therefore, the signs are visually similar overall to a low degree.

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 ‘MICHAEL’, present identically in both signs. The pronunciation differs in the sound of the sequence of letters ‘WALLISCH’ of the contested sign, which has no counterpart in the earlier mark. The opponent’s argument that the signs are aurally ‘highly similar’ because of the commonalities in the letters ‘MICHAEL’ cannot succeed. The contested sign is twice the length of the earlier mark and its second element, ‘WALLISCH’, has a completely different sound, which has a significant impact on the overall aural impression of the contested sign. Therefore, the signs are aurally similar to a low degree.

Conceptually, there is a link to the extent of ‘MICHAEL’. However, overall, the signs are deemed conceptually similar to a low degree only, on account of the presence in the contested sign of further differentiating elements (particularly the uncommon surname ‘WALLISCH’ and also a bird).

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.

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.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar to a low degree. They are directed at the public at large and at business customers, whose degree of attention may vary from average to high.

The signs are visually, aurally and conceptually similar to a low degree because of the coinciding element ‘MICHAEL’. However, this is not sufficient to lead to a likelihood of confusion or association, even in relation to identical goods and services.

Family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than given names. This is because common experience shows that the same given name may belong to a great number of people who have nothing else in common. This fully applies to the present case, since ‘MICHAEL’ is a very common given name in the relevant territory and it is highly unlikely that the relevant public would consider linking the specific name ‘MICHAEL WALLISCH’ with the very common name ‘MICHAEL’ and, therefore, be misled into attributing a common origin to the goods/services in question.

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

The opponent has also based its opposition on UK trade mark registration No 3 160 761 for the word mark ‘MICHAEL’, which is identical to the mark that has been compared and covers the same or a narrower scope of services in Class 35. In the relevant territory, ‘MICHAEL’ is also a very common name. Therefore, the considerations stated in section c) above and the reasoning that led to the finding that there is no likelihood of confusion on the part of the public, even for identical goods and/or services, are applicable, mutatis mutandis, for the relevant consumers in the territory of the United Kingdom. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has been rejected; no likelihood of confusion exists with respect to those goods and services.

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Arkadiusz GORNY

Jorge ZARAGOZA GOMEZ

Oana-Alina STURZA

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.