OPPOSITION No B 2 757 824

Gilmar S.P.A., Via Malpasso, 723/725, 47842 S. Giovanni in Marignano (Province of Rimini), Italy (opponent), represented by Perani & Partners SPA, Piazza San Babila, 5, 20122 Milano, Italy (professional representative)

a g a i n s t

Avi Rebibo, 37 rue Paul Vaillant Couturier, 92300 Levallois-Perret, France (applicant).

On 14/02/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 757 824 is upheld for all the contested goods, namely

Class 25: Clothing; headgear; footwear.

2. European Union trade mark application No 15 449 515 is rejected for all the above goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 449 515 namely against some of the goods in Class 9 and all the goods in Class 25. The opposition is based on European Union trade mark registration No 10 941 615 . The opponent invoked Article 8(1)(b) EUTMR.

Remark

In the context of a parallel opposition against European Union trade mark application No 15 449 515, Class 9 was partially rejected to goods against which the current opposition is not directed, namely magnetizers and demagnetizers. Therefore, the examination of the opposition will only proceed for the goods contested in Class 25.

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.

1. The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing; headgear; footwear.

The contested goods in Class 25 are identically contained in both lists of goods.

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. The degree of attention is average.

3. 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).

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.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. Indeed, the common element ‘ICE’ will be understood as such in those countries where English is understood. As it is not descriptive of any characteristic of the goods in question, this word is distinctive.

The word ‘WATTS’ in the contested sign will be associated to ‘a unit of power, equal to a power rate of one joule per second’. Since it keeps no relation with the goods at hand, it is distinctive. Likewise, the zipper and the peaks are also distinctive.

Contrary to argument of the opponent, the contested sign has no element that could be considered clearly more dominant than other elements since none of them has a particularly striking size. Nevertheless, it is true that the word ‘ICE’ written in white contrasts with the rest of the elements depicted in black and red. Furthermore, since the earlier mark is only composed of one element, the word ‘ICE’, there cannot be any element more dominant than others.

It must also be noted that 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).

Furthermore, 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 and from top to bottom, which makes the part placed at the left or on the top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the word ‘ICE’ which has an independent and distinctive role in both of them. However, they differ in the additional word ‘WATTS’, in the figurative elements of the contested sign and in the red and white colours that have no counterpart in the earlier mark. In spite of the differences existing, the earlier sign is entirely reproduced in the contested sign. Consequently, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛ICE’, present identically in both signs. The pronunciation differs in the sound of the word ‘WATTS’ of the contested mark, which has no equivalent in the earlier sign. Considering that the beginning of a sign is the part to which consumers pay more attention, as explained above, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning as regards the concept “ICE”, the signs are conceptually similar to an average degree.

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

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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

In the present case, the goods are identical and, even if the signs are only visually similar to a low degree, aurally and conceptually they are similar to an average degree. This is because the earlier mark, which degree of distinctiveness is normal, is reproduced in full in the contested sign where, moreover it is the verbal element that will first catch the attention of the public and, therefore, that will impact them the most. Moreover, as already mentioned in part c), even if the word ‘ICE’ does not occupy a dominant position within the sign because it does not have a prominent size, it is certainly contrasting with the rest of the elements that are represented in much darker colours, contrasting with the white colour of this word. Therefore, it will all the more attract the public’s attention.

Account is taken of the fact that 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 or economically linked undertakings.

Furthermore, it must be pointed out that likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse two signs directly, believe that they come from the same undertaking or from economically related ones. Indeed, it is common practice, on the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal (words and numbers) or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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).

Consequently, although the coincidences in the signs are visually less obvious than the differences, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role within the signs.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the 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 10 941 615. 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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Furthermore, the argument of the opponent that the word ‘ICE’ is part of a family of marks does not need to be assessed either since the opposition is successful on the basis of European Union trade mark registration No 10 941 615.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Pedro JURADO

Sandra IBAÑEZ

Steve HAUSER

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.