OPPOSITION No B 2 904 301

Syntex sp. z o. o., Ul. Powstańców 1863r.nr 12, 99-400, Łowicz, Poland (opponent), represented by Rumpel Spółka Komandytowa, Rumpel i Partnerzy, Częstochowska 1 a, 93-115, Łódź, Poland (professional representative)

a g a i n s t

Millet Mountain Group SAS, 21 rue du Pré Faucon, 74940, Annecy le Vieux, France (applicant), represented by Cabinet Germain & Maureau, 12 rue Boileau, 69006, Lyon, France (professional representative).

On 27/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 904 301 is partially upheld, namely for the following contested goods:

Class 18: Trunks and travelling bags; Holdalls; Bags (Net —) for shopping; Wheeled shopping bags; Satchels; Beach bags; Handbags; Bags for campers; Bags for climbers; Backpacks; Sport bags; Rucksacks for cyclists; Sling bags for carrying infants; Baby backpacks; Satchels; Bumbags; hobos; City bags; Travelling sets (Letherware); Wallets.

Class 25: Clothing, footwear, headgear; Shirts; Clothing of leather or imitations of leather; Belts (clothing); Scarves; Neckties; Hosiery; Socks; Slippers; Beach shoes, skiing or sports shoes; Underwear; Mountaineering shoes, Boots, Footwear and Slippers for climbing, Muffs for the hands, Mittens, Gaiters.

2. European Union trade mark application No 16 377 509 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 377 509 for the word mark ‘SYNTH’X’, namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 14 668 602 for the word mark ‘SYNTEX’. 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 23: Yarns, including knitting yarns; Decorative threads; Yarn.

Class 25: Clothing for men, women, young people and children; Underwear; Knitwear, including antifungal socks, jersey articles (clothing); Hosiery; Work clothing (included in this class); Neckties, Neckerchiefs, Scarves, Headbands for clothing, Gloves [clothing], Hats.

Class 26: Haberdashery.

The contested goods are the following:

Class 18: Trunks and travelling bags; Holdalls; Bags (Net —) for shopping; Wheeled shopping bags; Satchels; Beach bags; Handbags; Bags for campers; Bags for climbers; Backpacks; Sport bags; Rucksacks for cyclists; Sling bags for carrying infants; Baby backpacks; Satchels; Bumbags; hobos; City bags; Travelling sets (Letherware); Parasols, umbrellas; Wallets.

Class 25: Clothing, footwear, headgear; Shirts; Clothing of leather or imitations of leather; Belts (clothing); Scarves; Neckties; Hosiery; Socks; Slippers; Beach shoes, skiing or sports shoes; Napkins (babies' -) of textile; Underwear; Mountaineering shoes, Boots, Footwear and Slippers for climbing, Muffs for the hands, Mittens, Gaiters.

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).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 18

The contested trunks and travelling bags; holdalls; bags (net —) for shopping; wheeled shopping bags; satchels; beach bags; handbags; bags for campers; bags for climbers; backpacks; sport bags; rucksacks for cyclists; sling bags for carrying infants; baby backpacks; satchels; bumbags; hobos; city bags; travelling sets (letherware); wallets are similar to the opponent’s clothing for men, women, young people and children in Class 25. Consumers are likely to consider bags and travelling sets as accessories that complement articles of outer clothing as the former are closely co-ordinated with the latter. Furthermore, they may be produced by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market related to goods such as bags. Moreover, these goods can be found in the same retail outlets.

The opponent’s goods include yarns and decorative threads in Class 23, clothing and hats in Class 25 and haberdashery in Class 26. Contrary to the opponent’s arguments, these goods have no points in common with the contested parasols, umbrellas. The goods have different producers, target different end users and use different distribution channels. Furthermore, there is no complementarity or interchangeability either. Therefore, the contested parasols, umbrellas are dissimilar to all the opponent’s goods in Classes 23, 25 and 26.

Contested goods in Class 25

Underwear; neckties are identically included in both lists of goods.

The contested clothing, footwear, headgear; shirts; clothing of leather or imitations of leather; belts (clothing); scarves; hosiery; socks; slippers; beach shoes, skiing or sports shoes; mountaineering shoes, boots, footwear and slippers for climbing, muffs for the hands, mittens, gaiters are either identical or at least similar to the opponent’s clothing for men, women. This is because part of these contested goods include one another or overlap (for example, the contested clothing includes the opponent’s clothing for men, women) or the goods coincide at least in purpose, producers, end consumers and distribution channels (for example the contested boots with the opponent’s clothing for men, women).

The contested napkins (babies' -) of textile are dissimilar to all the opponent’s goods in Classes 23, 25 and 26. These goods are different in nature and they are marketed though different distribution channels and usually do not have the same commercial origin. Furthermore, there is no complementarity or interchangeability either. Therefore, these goods are dissimilar to all 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 or similar are directed at the public at large. The degree of attention is average.

3. The signs

SYNTEX	SYNTH’X
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).

In its submissions of 14/12/2017 the applicant refers to the opponent’s sign as a figurative one, namely , however the trade mark on which the opponent relies is a word mark. Therefore, the applicant’s arguments referring to the figurative elements of the opponent’s mark cannot be taken into account.

Both marks are word marks that are meaningless in the relevant territory and therefore distinctive to an average degree.

Visually and aurally, the signs coincide in the sequence of letters ‘SYNT**X’ and differ in the fifth letter of the signs, ‘E’ in the earlier mark and ‘H’ in the contested sign, and the apostrophe in sixth position of the contested sign. In assessing the visual and phonetic similarity of signs consisting exclusively of words, account may be taken, in particular, of their length and of the number and order of their letters and syllables (02/06/2010, T-35/09, Procaps, EU:T:2010:220, § 57; 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 55). Moreover, the pronunciation in several languages will be almost identical as the ‘H’ and the apostrophe will not be pronounced and the majority of the consumers will read an ‘I’ or ‘E’ as the missing vowel.

Furthermore, it is important to note that 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.

It is therefore considered that the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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

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.

As it has been concluded above, the contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. They are directed at the general public and the degree of attention is average. Furthermore, the earlier mark is considered to enjoy an average degree of distinctiveness. Additionally, the marks in dispute have been found visually and aurally similar to a high degree and there is no conceptual difference between the signs that could help consumers to distinguish them.

The signs have five letters in common, four at the beginning and ending with the same letter. The visual and aural differences between the marks are confined to the fifth letter and the apostrophe in the sixth position of the contested mark, which are not sufficient for consumers to readily differentiate the signs.

Account is also 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).

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 14 668 602 for the word mark ‘SYNTEX’.

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

Steve HAUSER

Jorge ZARAGOZA GOMEZ

Vita VORONECKAITE

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.