OPPOSITION No B 2 981 515

Alternativa de Moda S.A.S., Calle 14 # 52A-49, Medellin, Colombia (opponent), represented by Società Italiana Brevetti S.p.A., Corso dei Tintori, 25, 50122 Firenze, Italy (professional representative)

a g a i n s t

The Touchee Tales Oy, c/o Sanna Seiko Salo, Kiveliönkatu 44, 33580 Tampere, Finland (applicant) represented by Ilkka Vuorenmaa, Hämeenkatu, 9 (4krs), 33100 Tampere, Finland (professional representative).

On 18/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 981 515 is upheld for all the contested goods, namely:

Class 25: Clothing; footwear; headgear.

2. European Union trade mark application No 15 991 921 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 991 921 for the word mark ‘TOUCHEE’, namely against all the goods in Class 25. The opposition is based on, European Union trade mark registration No 10 515 807 for the figurative mark . 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.

1. The goods

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

Class 25: Swimwear, beachwear accessories, intimate apparel, lingerie, sleepwear, pyjamas, loungewear; all the aforementioned goods except for gloves.

The contested goods are the following:

Class 25: Clothing; footwear; headgear.

The contested clothing includes, as a broader category, inter alia, the opponent’s pyjamas, loungewear; all the aforementioned goods except for gloves. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested footwear; headgear overlap with the opponent’s beachwear accessories; all the aforementioned goods except for gloves. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s 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 considered to be average.

3. The signs

	TOUCHEE
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 implies that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

The verbal element ‘TOUCHÉ’ of the figurative earlier mark and the contested word sign ‘TOUCHEE’ are meaningful in certain territories, for example in those countries where French is understood. The first as the past participle of ‘toucher’ used as an acknowledgement of a hit, and the second one, in its feminine form, despite the fact that ‘touchée’ in French contains an accent that is not present in the contested sign. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, since from this perspective the signs bear additional coincidences (e.g. conceptual).

Both elements, ‘TOUCHÉ’ and ‘TOUCHEE’, have no meaning in relation to the relevant goods and are, therefore, distinctive.

The similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, § 52). Indeed aside from the accent, the earlier mark is entirely incorporated in the contested sign and the additional ‘e’ at the end is something that will not be immediately appreciated given its secondary positioning. Further the stylisation of the figurative mark is so minimal that it does not constitute a clear difference.

Taking into account all the above is possible to conclude that none of the signs have any element that could be considered clearly more dominant or distinctive than other elements.

Visually, the signs coincide in ‘TOUCHE’, which constitutes the only verbal element of the earlier mark. Although they differ in the accent of the last letter ‘É’ of the earlier mark and in the slightly stylisation of its letters and in the additional letter ‘E’ of the contested sign, the stylisation of the earlier mark is minimal and insignificant for the purpose of the comparison of the two signs and the difference in the accent is visually marginal because of their size as compared to other elements.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of all its letters, taking into account that the additional letter ‘E’ of the contested sign is silent in French and the accent in the earlier mark has not impact.

Therefore, aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs relay the same meaning, the only difference in the conjugation, the earlier mark being a past participle whilst the contested is feminine thus the signs are conceptually highly similar.

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 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 are identical. The degree of attention of the relevant public is average and the distinctiveness of the earlier mark is normal.

The signs are visually and conceptually similar to a high degree and aurally identical.

Likelihood of confusion covers situations 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods/services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consumers could be led to believe that the owner of the earlier mark has launched a new line of products, for example for women, given that the contested sign is the feminine form (although without accent) of the earlier mark. Therefore, there is a likelihood of confusion.

The applicant argues that the word touché, in different forms, is used in several trade marks. The Opposition Division notes that even if it was the exactly same word the existence of several signs or registered trade marks is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. Furthermore, it follows that no evidence was filed demonstrating that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word touché. Under these circumstances, the applicant’s claim must be set aside.

Taking into account all the above, the Opposition Division considers that there is a likelihood of confusion on the French-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 10 515 807. It follows that the contested sign must be rejected for the all the contested goods found to be identical to those of the earlier trade mark.

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

María del Carmen SUCH SÁNCHEZ

Maria Clara IBAÑEZ FIORILLO

Vanessa PAGE

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.