OPPOSITION No B 2 922 964

Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Jacobs Capital (PTY) LTD, 5 Ennisdale Drive, 4051 Durban North, South Africa (applicant) represented by Eugene Johann Pienaar, 5 Cranwell Grove, GU18 5YD Lightwater, Surrey, United Kingdom (professional representative).

On 29/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 922 964 is upheld for all the contested goods.

2. European Union trade mark application No 16 420 721 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 of European Union trade mark application No 16 420 721 ‘MB WORKWEAR’ (word mark). The opposition is based on European Union trade mark registration No 6 963 235 . 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 9: 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; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 25: Clothing, footwear, headgear.

After a limitation requested by the applicant on 02/10/2017, the contested goods are the following:

Class 9: Safety apparatus for prevention of accidents, injury, fire and irradiation; safety headwear, including hard-hats, helmets, visors and masks; safety clothing, including reflective clothing, fire resistant clothing, insulated and thermal clothing for use in freezers; safety footwear, including safety boots; safety eyewear, including protective goggles and safety glasses; safety clothing for protection against accident or injury; protective clothing for the prevention of injury; protective work clothing [for protection against accident or injury].

Class 25: Work clothes; work shoes; work overalls.

The term ‘including’, used in the applicant’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).

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 9

The opponent’s life-saving apparatus and instruments include, as a broader category, the contested safety apparatus for prevention of accidents, injury, fire and irradiation. Therefore, they are identical.

The contested safety headwear, including hard-hats, helmets, visors and masks; safety clothing, including reflective clothing, fire resistant clothing, insulated and thermal clothing for use in freezers; safety footwear, including safety boots; safety eyewear, including protective goggles and safety glasses; safety clothing for protection against accident or injury; protective clothing for the prevention of injury; protective work clothing [for protection against accident or injury] in class 9 are life-saving and/or protective devices, clothing and shoes specially created for protecting the body against accidents, irradiation and/or fire, meant to be used within environments that can involve a risk of accident or injury.

These contested goods are closely related to the opponent’s life-saving apparatus and instruments as they share the same purpose of preventing injury and/or saving lives.They may be directed at the same group of consumers. Finally, they may also share the same retail outlets. To sum up, the goods in question are highly similar (by analogy, 21/04/2017, R 1436/2015-5, TRIUMPH (fig.) / TRIUMPH et al., § 64).

Contested goods in Class 25

The contested work clothes; work overalls are included in the broad category of the opponent’s clothing. They are therefore identical.

The contested work shoes are included in the broad category of the opponent’s footwear. They are therefore identical.

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 to a high degree are directed at both the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. In this case, part of the goods can be expensive, are not frequently purchased and can help to save a person’s life (e.g. helmets, fire resistant clothing). Therefore, a higher than average degree of attention would be expected in relation to them.

3. The signs

	MB WORKWEAR
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 element ‘WORKWEAR’ that the signs have in common is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public to whom this element is meaningless and thus, distinctive for the goods at issue.

The element ‘WORKWEAR’ of the earlier mark is underlined by the verbal elements ‘PROTECTIVE CLOTHING’, which appear smaller in size and depicted inside a label. Due to its size and position, the dominant element is ‘WORKWEAR’ as it is the most eye-catching.

The natural meaning of the English term ‘PROTECTIVE’ will be understood by the relevant public as the equivalent in Spanish to the term ‘PROTECTOR’, due to the similar spelling between both terms. Taking into account the kind of goods involved, the relevant public will perceive this term as descriptive of their characteristics. The element ‘CLOTHING’ will be meaningless for the part of the relevant public who cannot understand English at all and, therefore, it is distinctive. The label containing the words ‘PROTECTIVE CLOTHING’ is purely decorative and void of distinctive character.

The first element of the contested sign, ‘MB’, is meaningless for the relevant public, as there is no clue about what stands for and is, therefore, distinctive.

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). Therefore, in the present case, the verbal elements of the earlier mark are of a greater impact than its typeface and the label.

Visually, the signs coincide in the distinctive element ‘WORKWEAR’, which is the dominant element of the earlier mark and the longest in the contested sign. However, they differ in the additional verbal elements of the earlier mark, namely the secondary elements ‘PROTECTIVE CLOTHING’, as well as in the letters ‘MB’ of the contested sign. The signs also differ in colours and typeface of the elements in the earlier mark, none of them particularly striking or stylised.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of the element ‘WORKWEAR’, present identically in both signs. The pronunciation of the signs differs in the two letters ‘MB’ of the contested sign. Although the earlier mark also includes the differing terms ‘PROTECTIVE WORKWEAR’, they are likely to be omitted by consumers pronouncing the mark, either because they associate the meaning of the element ‘PROTECTIVE’ with characteristics of the goods involved, as explained above, or because they are perceived as secondary elements.

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

Conceptually, the common element of the signs has no meaning for the relevant public. Reference is made to the previous assertions concerning the semantic concept of the earlier sign’s word ‘PROTECTIVE’, which could not serve as a commercial identifier. However, the rest of the elements are meaningless for the relevant public. 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, despite the presence of some non-distinctive or lowly distinctive elements, as explained in section c) above.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar to a high degree. The relevant public is formed by the public at large and business customers with a degree of attention that varies from average to high. The earlier mark has a normal distinctiveness.

The signs are visually similar to an average degree, aurally similar al least to an average degree and the conceptual comparison is not applicable.

The signs have the distinctive element ‘WORKWEAR’ in common, their differences being found in visually secondary elements of the earlier mark and the first element of the contested sign. Indeed, although the contested sign begins with the two letters ‘MB’, the common element (eight letters) plays an independent role within the sign and has a relevant impact from a visual and aural perspective.

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).

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. It is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable, image.

In line with the above, in the present case, it is considered that the coincidences between the signs, together with the identity or high similarity of the goods involved, are clearly sufficient to outweigh their dissimilarities, and may induce, at least part of the public, to perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 6 963 235. It follows that the contested trade mark must be rejected for all the contested goods.

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

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

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.