OPPOSITION No B 2 892 217

Groupe LS S.A., 11-13 boulevard de la Foire, 1528 Luxembourg, Luxembourg (opponent), represented by Cabinet Nuss, 10, rue Jacques Kablé, 67080 Strasbourg Cédex, France (professional representative)

a g a i n s t

Pimba - Importação e Exportação de Vestuário Lda., Rua da Pedreira, lote nº 9, 4800-057 Guimarães, Portugal (applicant), represented by Francisco Aventino Pinheiro, Av. da Boavista nº 2121, 4º sala 412, 4100-134 Porto, Portugal (professional representative).

On 26/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 892 217 is upheld for all the contested goods.

2. European Union trade mark application No 16 600 702 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 600 702 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 11 932 696 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.

a) The goods

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

Class 9: Protective clothing for protection against accident and/or injury, protective gloves for protection against accident and/or injury, safety goggles for protecting the eyes, protective footwear for protection against accident and/or injury, protective suits for motorcyclists, special protective suits for motorcyclists.

Class 25: Clothing, and in particular t-shirts, t-shirts, shirts, sweaters, trousers, skirts, denims, jackets [clothing], swimwear, linen (body —) [garments], headgear, footwear, clothes for sports, motorcycle clothing, sweat suits, thermal suits, waterproof suits for motorcyclists; gloves (clothing), bandanas, babushkas, sashes for wear.

The contested goods are the following:

Class 25: Clothing; headgear; footwear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, 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).

Clothing; headgear; footwear are identically contained in both lists of goods.

b) 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 average.

c) 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 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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, because some of the words in the signs are meaningful for this part of the public, as explained below.

The earlier sign is a figurative sign that consists of the verbal element ‘PERF’ in stylised upper case letters with the letter ‘P’ depicted in red and the other letters depicted in black. The verbal element ‘PERF’ will be understood by the relevant public as ‘a performance’ (information extracted from Oxford Dictionaries on 26/10/2018 at https://en.oxforddictionaries.com/definition/perf). This word neither describes the goods in question nor alludes to the characteristics thereof, and it is not otherwise weak or non-distinctive. It has, therefore, an average degree of distinctiveness.

The verbal element ‘PERF’ is followed by a figurative element in red, which for a significant part of the public will have no meaning and will be perceived as fanciful; however, a part of the public may perceive this element as a stylised depiction of an eagle. In any event it has an average degree of distinctiveness as it neither describes the goods in question nor alludes to their characteristics.

However, the verbal element will have a greater impact on the relevant public than the figurative element. 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 earlier sign has no elements which can be considered more dominant (visually outstanding) than other elements.

The contested sign is a figurative mark depicting the verbal elements ‘PERFF STUDIO’ in large capital letters and the verbal elements ‘CUTTING EDGE DESIGN’ in smaller capital letters underneath. The verbal element ‘PERFF’ will not be associated with any meaning by the relevant consumers when they encounter the contested sign in a written form. However, when they hear the sign they will associate the verbal element ‘PERFF’ with the aurally identical word ‘perf’ and its respective meaning mentioned above. In any event it has an average degree of distinctiveness.

The verbal element ‘STUDIO’ is of weak distinctive character because it alludes to the place where the goods in question are designed. It has, therefore, a diminished capacity to serve as an indicator of trade origin and has also a limited impact on the relevant public.

The phrase ‘cutting edge’ means, inter alia, ‘the latest or most advanced stage in the development of something’ (information extracted from Oxford Dictionaries on 26/10/2018 at https://en.oxforddictionaries.com/definition/cutting_edge). Therefore, the word combination ‘CUTTING EDGE DESIGN’ in the contested sign will be understood as laudatory in respect of the goods in question, in the meaning that their design corresponds to the latest tendencies. This word combination is not able to serve as an indicator of trade origin and thus cannot distinguish the goods of one undertaking from those of other undertakings. It is, therefore, devoid of distinctive character. Due to its size and position in the contested sign ‘CUTTING EDGE DESIGN’ is also less dominant than the other verbal elements, which are ‘PERFF STUDIO’.

Visually, the signs coincide in the sequence of the letters ‘PERF’ contained in both signs. They differ, however, in the stylisation of these letters, including the colour and the presence of a figurative element in the earlier sign, as well as the additional letter ‘F’ and the word elements ‘STUDIO’ and ‘CUTTING EDGE DESIGN’ in the contested sign, which have no counterparts in the other sign. As explained above, the figurative element of the earlier sign and the additional verbal elements of the contested sign are either of secondary importance or are weak/non-distinctive.

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.

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

Aurally, the pronunciation of the signs coincides in the syllable ‛PERF’, present identically in both signs. The signs differ in the pronunciation of the words ‘STUDIO’ and ‘CUTTING EDGE DESIGN’ of the contested sign which have no counterparts in the earlier sign. However, as outlined above these elements are weak or non-distinctive.

The figurative element of the earlier sign has no impact on the aural comparison of the signs, as it will not be pronounced.

Therefore, the signs are aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Insofar as the verbal element ‘PERFF’ of the contested sign will be associated with the meaning of the word ‘perf’, the signs are conceptually similar to an average degree because they differ in the concept borne by the additional figurative element of the earlier sign (for a part of the relevant public only), as well as the other verbal elements of the contested sign which are, however, either of secondary importance or weak/non-distinctive. Insofar as the verbal element ‘PERFF’ will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case the goods are identical, the signs are visually and conceptually similar to an average degree or conceptually not similar and aurally similar to a below average degree; the degree of attention of the relevant public is average and the earlier sign is normally distinctive.

The signs have the sequence of letters ‘PERF’ in common placed at the beginning of both signs which forms the element with the strongest impact on the relevant public. The figurative element of the earlier sign, as well as the other verbal elements of the contested sign have less impact because they are either of secondary importance or weak/non-distinctive for the reasons set out above in part c) of this decision. The different stylisation of the coinciding letters is not striking and does not add an important difference between the signs since consumers are used to a stylisation of verbal elements in trade marks.

Account is 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).

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. 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 similarities between the signs at issue are particularly relevant when assessing the likelihood of confusion between them.

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.

On account of the identity of the goods in question and the visual similarities between the signs at issue arising from the coinciding sequence of letters ‘PERF’ at the beginning of the signs which form the element with the strongest impact in both signs, the relevant consumers are likely to believe that the goods designated by the conflicting signs originate from the same undertaking or from economically linked undertakings.

In support of its arguments the applicant claims that two European Union trade mark registrations, namely No 12 889 821 and No 5 284 088 containing the verbal element ‘PERF’ are conceptually dissimilar. It is not evident how the applicant reaches this conclusion as the cited signs have never been subject to opposition proceedings ruling on their conceptual dissimilarity. Furthermore, the cited signs contain additional words such as ‘ECHO’ and ‘TEC’ which have indeed different connotations. Nevertheless, the cited signs are not subject of the current proceedings so that possible similarities or dissimilarities between them are irrelevant.

The applicant also refers to cases where no likelihood of confusion has been established. However, it only indicates the conflicting signs in the respective proceedings without providing the trade mark numbers or the numbers of the opposition proceedings. In the absence of such information, the Opposition Division is not able to identify the cases referred to by the applicant and can therefore not take into consideration the applicant’s argument.

In the appeal proceedings cited by the applicant, namely decisions of 15/01/2010, R 0745/2009-2, Aromania (figurative mark)/Aromas (figurativa mark) et al., 27/05/2010, R 1321/2009-1, Pretec prefabricados tecnicos (fig. mark) /
Pretech prefabricado y tecnología en estructuras y cerramientos de hormigon s.a.
(fig. mark) and 18/04/2011, R 1357/2009-2, Lactofree (fig. mark) / lactofree (fig. mark) the trade marks subject to the aforementioned proceedings are different in their structure and graphic representation from the trade marks subject to the current proceedings. Therefore, no parallel between the cited cases and the current proceedings can be drawn and the reasoning and the outcome in the cited cases cannot be transferred to the current proceedings.

Considering all the above, there is a likelihood of confusion on the part of the English-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 11 932 696. 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

Swetlana BRAUN

Alexandra APOSTOLAKIS

Vít MAHELKA

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.