OPPOSITION No B 2 892 480

Salvador Martínez Sempere, Amilcar Barca, 5, 03204 Elche, Spain (opponent), represented by Patentes y Marcas Regimark, S.L., C/ José Ramos, 2 Entlo., 03203 Elche (Alicante), Spain (professional representative)

a g a i n s t

E.G. Market Operations Srls, Via Gorizia 53, 64011 Alba Adriatica (TE), Italy (applicant), represented by Con Lor Spa, Via Bronzino 8, 20133 Milano, Italy (professional representative).

On 27/06/2018, the Opposition Division takes the following

DECISION

1. Opposition No B 2 892 480 is partially upheld, namely for the following contested goods:

Class 25: Clothing; shoes; headgear; inner soles; studs for football boots.

2. European Union trade mark application No 16 381 204 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 381 204 , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 11 476 901 . 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.

Class 35: Wholesaling and retailing in shops and via global computer networks of clothing, footwear and headgear.

The contested goods are the following:

Class 25: Clothing; shoes; headgear; footwear uppers; cap peaks; dress shields; fittings of metal for footwear; hat frames [skeletons]; heelpieces for footwear; heelpieces for stockings; heels; inner soles; non-slipping devices for footwear; pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots; tips for footwear; welts for footwear.

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.

The contested clothing; headgear are identically contained in both lists of goods.

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

The contested inner soles are removable soles worn in a shoe for warmth, as a deodoriser or to improve the fit. These goods and the opponent’s footwear are likely to be produced by the same manufacturers and distributed through the same channels. Furthermore, there is complementarity between the goods and they target the same relevant public. It follows that the contested inner soles are similar to the opponent’s footwear.

The contested studs for football boots are small protrusions fixed to the base of football boots to allow wearers to grip the ground. They have the same producers, end users and distribution channels as the opponent’s footwear. Furthermore, these goods are complementary. Therefore, they are considered similar.

The contested footwear uppers; cap peaks; dress shields; fittings of metal for footwear; hat frames [skeletons]; heelpieces for footwear; heelpieces for stockings; heels; non-slipping devices for footwear; pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; tips for footwear; welts for footwear are parts and fittings for clothing, footwear or headgear. Although there is a degree of complementarity between some of these goods and the opponent’s clothing, footwear, headgear, it is not sufficient to find similarity between these contested goods and the opponent’s goods in Class 25. They have different natures and purposes, they are usually distributed through different channels, they are manufactured and provided by different undertakings and they usually target different consumers – the contested goods target mainly manufacturers of clothes, footwear and headgear, not end users. Therefore, the goods under comparison are dissimilar.

Furthermore, these contested goods are also dissimilar to the opponent’s wholesaling and retailing in shops and via global computer networks of clothing, footwear and headgear in Class 35. The opponent’s services are retail and wholesale services, which are services rendered around the actual sale of specific goods, namely clothing, footwear and headgear. Similarity between retail (and wholesale) services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods subject to the retail (wholesale) services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, as described above. Apart from being different in nature, since services are intangible whereas goods are tangible, the goods and services in comparison serve different needs. The opponent’s services consist in bringing together, and offering for sale, the above specified products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition, nor complementary.

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

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 mark is a figurative sign, consisting of the element ‘Elyséss’, written in rather standard black title case letters.

The contested sign is a figurative mark, consisting of the element ‘elysse’, written in slightly stylised lower case letters, in which the last letter ‘e’ is written backwards. It is nevertheless likely to be perceived as the letter ‘e’, as the style resembles the one used for the first letter ‘e’ in this element. Above the element ‘elysse’ is a figurative depiction consisting of two overlapping letters ‘e’ or a stylised letter ‘e’. It is, therefore, likely to be perceived as a decorative depiction emphasising the first letter of the element ‘elysse’. It is, therefore, considered that the element ‘elysse’ of the contested sign is more distinctive than the figurative depiction of the letter(s) ‘e’ above it.

Furthermore, 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).

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 applicant argues in its submissions that the earlier mark will be perceived as a reference to a street in Paris, namely ‘Avenue des Champs-Élysées’ and that the contested sign will be perceived as a female given name derived from Elizabeth. For part of the relevant public, however, such as the Bulgarian- and Greek-speaking parts, the contested sign would not be perceived as having a particular meaning. Furthermore, it is unlikely that these parts of the public would relate the element ‘Elyséss’ of the earlier mark to the street in Paris, mentioned above, and the applicant does not submit any evidence to prove such a perception. Therefore, the Opposition Division finds it appropriate to first focus the comparison of the signs on the Bulgarian- and Greek-speaking part of the relevant public, for which (for the reasons provided above) the elements ‘Elyséss’ of the earlier mark and ‘elysse’ of the contested sign would not have any particular meaning.

As the elements ‘Elyséss’ of the earlier mark and ‘elysse’ of the contested sign do not convey a particular meaning for the relevant public, they are considered distinctive.

The signs under comparison have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

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.

Visually, the signs coincide in the sequence of the first four letters, ‘ELYS’, present in the verbal elements of both signs. The remaining sequences of letters, namely ‘ess’ in the earlier mark against ‘se’ in the contested sign, both contain the letters ‘e’ and ‘s’, albeit presented in reverse order and with an additional letter ‘s’ in the earlier mark.

The signs differ in the accent above the second letter ‘e’ in the earlier mark, as well as in the figurative element depicting the letter(s) ‘e’ and the stylisation of the contested sign.

Reference is made to the conclusions reached above regarding the distinctiveness of the elements of the signs under comparison.

Taking into account the commonalities in the signs mentioned above, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the sequence of letters ‘ELYS*E**’, present in both signs. The fourth letter, ‘s’, of the earlier mark is likely to be pronounced in a way that is identical or at least highly similar to the sound of the fourth and fifth letters, ‘ss’, of the contested sign. The signs would differ in the sound of the last two letters, ‘ss’, in the earlier mark. The figurative depiction of the letter(s) ‘e’ in the contested sign, as it emphasises the first letter, ‘e’, of the verbal element, is not likely to be pronounced on its own. The inclusion of an accent in the earlier mark will not have an impact that could result in any significant phonetic difference, as the contested sign could also be pronounced with a stress on the last letter, ‘e’, by at least part of the relevant public and, even if pronounced with the stress on different syllable, this would not significantly affect the commonalities in the pronunciation, derived from the sounds mentioned above.

Therefore the signs are aurally similar at least to an average degree.

Conceptually, neither of the verbal elements of the signs has a meaning for the relevant public as specified above. The figurative depiction of the letter(s) ‘e’ in the contested sign will be perceived only as emphasising the first letter of the verbal element of the same sign and not as conveying a separate meaning. 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

As seen above, the contested goods are partly identical or similar and partly dissimilar to the goods and services of the opponent. The earlier mark enjoys an average degree of distinctiveness in relation to the relevant goods.

The signs are visually similar to an average degree and aurally similar to at least an average degree, as analysed above.

It is taken into account 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.

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). Therefore, due to the commonalities between the signs, deriving from their visual and aural similarities, when consumers encounter the signs at different times, they may assume that the signs have the same origin or at least economically linked origins.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian- and Greek-speaking part of the public and the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 476 901.

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.

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

Alicia BLAYA ALGARRA

Maria SLAVOVA

Irina SOTIROVA

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.