OPPOSITION No B 2 882 077

Nautica Apparel, Inc. 40 West 57th Street, 10019 New York, United States of America (opponent), represented by Akran Intellectual Property Srl, Via del Tritone 169, 00187 Roma, Italy (professional representative)

a g a i n s t

Pirama Trade Sales Group S. L., Partida de Martino 50 polg 2, 03295 Elche – (Alicante) Spain (applicant), represented by Alberto Paz Espuche, Agilmark Patentes & Marcas SL, Parque cientifico de la Universidad Miguel Hernández de Elche, Avda de la Universidad s/n, Edific Quórum IV, 03202 Elche, (Alicante) Spain (professional representative).

On 21/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 882 077 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 181 802, (figurative mark). The opposition is based on part of the goods and services of European Union trade mark registration No 13 304 639 (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 and services

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

Class 25: Clothing, footwear, headgear; men's, women's and children's apparel; clothing and clothing accessories within this class; aprons; hosiery; shoes; sneakers; trainers; boots; moccasins; sandals; vests; undershirts; boxer shorts; shirts; blouses; T-shirts; trousers; pants; jeans; leggings; leg warmers; jackets; coats; overcoats; raincoats; sweaters; jumpers; jerseys; skirts; dresses; sarongs; suits; tailored suits; tuxedos; bathing suits; bathing caps; bathrobes; slippers; shorts; ties; neckwear; scarves; suspenders; knickers; underpants; socks; stockings; bras; pyjamas; hats and caps; hoods; bandanas; headbands; gloves and muffs; belts and braces; all-weather gear; ponchos; shawls; wristbands; non-slipping devices for footwear; bibs; ear muffs; belts made of imitation leather.

Class 35: Advertising; business management; business administration; office functions; retail and online retail services in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, cosmetics, make-up preparations, toiletries, fragrances, fragrances for personal use, perfumes, colognes, deodorants, anti-perspirants, essential oils for personal use, skin creams, skin lotions, sun creams, sun lotions, shaving creams, shaving gels, shaving lotions, after-shave creams, after-shave lotions, after-shave emulsion, astringent, hair shampoo, conditioners, hair gels, hair lotions, hair cream, hair spray, hair colourants, body powder, talcum powder, body soaps, body washes, facial soaps, facial washes, bath salts, shower creams, shower gels, nail care preparations; retail and online retail services in relation to scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computer software, fire-extinguishing apparatus, spectacles, eyeglasses, sunglasses, monocles, spectacle and sunglasses cases, spectacle and sunglasses frames, spectacle and sunglasses lenses, spectacle and sunglasses chains, spectacle and sunglasses cords and straps, sun visors, and parts, fittings and accessories relating to all the aforesaid goods; retail and online retail services in relation to precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, clocks, watches, jewellery, cufflinks, tie pins, tie clips, imitation jewellery, amulets, badges, bracelets, brooches, buckles, cigarette and cigar cases, watch chains, charms, earrings, flasks, medallions, medals, necklaces, rings, watch bands, watch straps, watch buckles, and parts and fittings for all the aforesaid goods; retail and online retail services in relation to leather and imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, wallets, hipfold wallets, trifold wallets, pocket wallets, key cases, tie cases for travel, shoulder bags, tote bags, clutch bags, carry-on bags, knapsacks, attache cases, bags for campers, bags for climbers, beach bags, brief cases, card cases, note cases, handbags, handbags for men, haversacks, shoulder bags, shoulder belts, pouches, purses, rucksacks, satchels, school bags, shopping bags, sling bags, changing bags, baby carriers [slings or harnesses], overnight bags, duffel bags, suitcases, travelling sets, luggage, vanity cases, cosmetic bags [not fitted], book bags, valises, garment bags for travel, leather belts, belts made of imitation leather, and parts and fittings for all the aforesaid goods; retail and online retail services in relation to furniture, mirrors, picture frames, beds, dressers, chests, mirrors, tables, cabinets, sideboards, serving counters, servers, chairs, benches, shelves for ornaments and books, open-shelve cabinets, wall units, bars, furniture adapted for home entertainment systems including stereo cabinets and television cabinets and DVD cabinets, desks, bookcases, sofas, love seats, ottomans, sleeper sofas, rocking chairs, recliners, outdoor furniture, all of the above upholstered or unupholstered, made of wood, made of wicker, or made of a combination of wood and wicker; retail and online retail services in relation to household or kitchen utensils and containers, combs and sponges, brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, glass and plastic beverage ware, dinnerware, coasters (not of paper or linen), bowls, cups, candlesticks, napkin holders, napkin rings, serving platters, serving spoons, decanters, stirrers, shakers, paper cups, paper plates; retail and online retail services in relation to textiles, bed covers, table covers, bed linen, bedspreads, bed sheets, bed pads, bed blankets, quilted blankets, comforters, duvets, pillow cases, pillow shams, bath linen, towels, washing mitts, washcloths, textile wall hangings, upholstery fabrics, curtains, flannel, table linens, table cloths not of paper, table mats not of paper, textile place mats, table napkins not of paper, kitchen towels, textile fabrics for use in the manufacture of bedding, textile goods for use as bedding, bed quilts, continental quilts, quilt bags, quilt bedding mats, quilt covers, quilts, fabric, fabrics for textile use, curtains of textile or plastic, curtains for windows, handkerchiefs of textile, throws, cushion covers, furnishing fabrics, table mats, fabric for use in the manufacture of umbrellas, tea towels, upholstery fabrics, textile wall hangings, fabric for use in the manufacture of clothing, fabric for manufacturing men's outerwear, fabric for manufacturing women's outerwear, fabric for footwear, linings of textile for footwear, materials (textile) for use in the manufacture of footwear, materials (textile) for use in the manufacture of linings for footwear, and parts and fittings for the aforesaid goods; retail and online retail services in relation to clothing, footwear, headgear, men’s, women’s and children’s apparel, clothing accessories, aprons, hosiery, shoes, sneakers, trainers, boots, moccasins, sandals, vests, undershirts, boxer shorts, shirts, blouses, T-shirts, trousers, pants, jeans, leggings, leg warmers, jackets, coats, overcoats, raincoats, sweaters, jumpers, jerseys, skirts, dresses, sarongs, suits, tailored suits, tuxedos, bathing suits, bathing caps, bathrobes, slippers, shorts, ties, neckwear, scarves, suspenders, knickers, underpants, socks, stockings, bras, pyjamas, hats and caps, hoods, bandanas, headbands, gloves and muffs, belts and braces, all-weather gear, ponchos, shawls, wristbands, non-slipping devices for footwear, bibs, ear muffs; retail and online retail services in relation to carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile), wall paper, wall coverings, fabric bath mats.

The contested goods and services are the following:

Class 25: Clothing; Footwear; Headgear.

Class 35: Wholesale services in relation to footwear; Wholesale services in relation to clothing; Retail services connected with the sale of clothing and clothing accessories; Retail store services in the field of clothing; Retail services in relation to footwear; Advertising; Marketing services; Office functions; Business administration services for processing sales made on the internet.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 deemed to be identical are directed at the public at large, but also at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods sold or of the services provided.

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 earlier right is a figurative trade mark. It consists of two parallel black lines, which are inclined to the right side. The right line is thinner and shorter than the left line, both are slightly curved, inclined to the right side and are getting thinner towards their top end. Part of the public might just recognize two black lines, and another part of the public might identify two sails.

The contested sign consists of two verbal elements – the blue and bold words ‘BLUE SHARK’, and two blue parallel lines above these words. The right line is thinner and shorter than the left line, both are slightly curved, inclined to the left side and are getting thinner towards their top end. Part of the public might just recognize two blue lines, and another part of the public might identify two shark fins or also two sails.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public who will perceive the figurative elements in both marks as sails, which means that the best case scenario for the opponent is examined. Having said that, the distinctiveness of these elements is considered as normal in relation to the goods and services at stake.

‘BLUE’ will be understood as referring to the colour blue by the European public as it is a basic English word (see judgment 12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30) and is less distinctive for at least part of the contested goods and services, as it suggests that the goods such as clothing are blue (or that e.g. retail services relate to goods with that characteristic).

‘SHARK’ is an English word which will be understood as such by the English speaking public of the European Union. For the remaining public, this word has no meaning. As ‘SHARK’ however is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive for all the public concerned.

Regarding the figurative element of the contested sign, at this point it should be stressed 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). In the present case, although part of the verbal elements is weak for at least part of the goods and services, the relevant public would, therefore, still remember the mark, and refer to it, by the verbal elements.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs show certain similarities with regard to their figurative elements of two parallel lines resembling sails. However, they differ in the outlines, the shape and inclination of those lines as well as the colours used (black vs blue, respectively). Furthermore, the contested sign contains two additional verbal elements having more impact in the overall perception of the mark for the reasons set forth above.

Therefore, the signs are visually overall similar to a low degree, taking into account the abovementioned facts regarding the distinctiveness of the elements of the signs.

Purely figurative signs are not subject to a phonetic assessment. As the earlier sign is purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Owing to a graphic representation of sails in both marks, the signs are considered similar to an at most above-average degree, taking into account the abovementioned facts regarding the distinctiveness of the elements 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.

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.

Even though the opponent briefly referred to a history of the company and the amount of shops, it 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 contested goods and services are deemed to be identical to the opponent’s goods and services.

The signs are visually similar to a low degree and conceptually similar to an at most above-average degree. The public concerned is the public at large, but also at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high.

Concerning the contested goods in Class 25, generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. This is even more the case here since the earlier mark is a purely figurative mark. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the visual differences between the signs caused by the differences in the figurative elements and the additional verbal elements of the contested sign are particularly relevant when assessing the likelihood of confusion between them.

Even though there are some similarities between the signs, as set out above under section c) of this decision, the overall design and styling of the figurative elements of the opposing marks is different. Furthermore, the contested sign contains two verbal elements. Even though the goods and services are deemed to be identical, the Opposition Division finds that the differences between the marks are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.

This finding will hold even more true in relation to the part of the relevant public that does not perceive the signs as having the concept of a pair of sails in common, as for that part of the public the signs are not visually similar and have no conceptual similarity.

Considering all the above, even given that the goods and services are assumed to be identical, there is no likelihood of confusion on the part of the general public. As there is no likelihood of confusion for the general public, there is even less likelihood of confusion for a professional public which displays a higher level of attention.

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

Klaudia MISZTAL

Karin KLÜPFEL

Tobias KLEE

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.