OPPOSITION No B 2 990 961

Pom Holding B.V., Oudeschans 26 H, 1011 LB Amsterdam, Netherlands (opponent), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, Netherlands (professional representative)

a g a i n s t

Agne Skutelis, Jumeirah Park, District 8, Villa M21 Dubai, UAE n/a, Dubai, United Arab Emirates, (applicant) represented by Metida Law Firm Zaboliene and Partners, Business center Vertas, Gynéjų str. 16 01109 Vilnius, Lithuania (professional representative).

On 30/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 990 961 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 671 208 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 and services of the European Union trade mark application No 16 671 208 for the figurative mark , namely against all the goods and services in Classes 25 and 35. The opposition is based on, inter alia, European Union trademark registration No. 11 890 704, for the word mark ‘POM Amsterdam’. The opponent invoked Article 8(1)(b), EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Benelux trade mark No. 901 106 and European Union trademark registration No. 11 890 704. However, in its submissions on 04/04/2019, the Opponent withdrew the Benelux trademark registration No 901 106 as basis for the opposition.

The earlier trade mark No. 11 890 704 was registered on 11/11/2013 and the date of filing of the contested trade mark is 03/05/2017. Therefore, the request for proof of use is inadmissible.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No.11 890 704.

a) The goods and services

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

Class 25: Clothing, footwear, headgear; shawls; belts [clothing]; shawls; underwear; lingerie.

Class 35: Retailing and wholesaling of sale and promotion of and business mediation in the sale and promotion of clothing, footwear, headgear, headscarves, belts, scarves, underwear and lingerie.

The contested goods and services are the following:

Class 25: Clothing.

Class 35: Retail services connected with the sale of clothing and clothing accessories.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

Contested services in Class 35

Retail services connected with the sale of clothing are identically contained in both lists of services (including synonyms).

The contested retail services connected with the sale of clothing accessories are considered highly similar to the opponent’s retail services related to the opponent’s retailing of clothing. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

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 and services found to be identical and highly similar are directed at the public at large. The degree of attention is average.

c) The signs

POM Amsterdam
Earlier trade mark	Contested sign

The relevant territory is 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 the word mark ‘POM Amsterdam’. The verbal element ‘Amsterdam’ will be perceived as referring to the official capital of the Netherlands, where the relevant clothing goods and retail services are manufactured or provided and will, therefore, be non-distinctive for these goods and services.

The contested sign is a figurative mark composed of the verbal element ‘POM de la POM’ in a circle, the whole represented six times in the sign inside rectangles of different colours. The verbal elements ‘POM are depicted twice, one above another, in standard upper case letters and with the significantly smaller verbal element ‘de la’ in between, and in italic typeface. All six rectangles and verbal elements are depicted identically, apart from their background colour, the verbal element on the white background and its surrounding circle (depicted in green instead of white). Neither the colours, graphic aspects nor the figurative element of the contested sign will convey any particular concept. Due to its size, position and typeface, at least a part of the relevant public will only perceive the verbal element ‘POM’ in the contested sign since it creates a bigger visual impact than the verbal element ‘de la’ in the contested sign. The element 'de la' is hardly visible not only because of its reduced size but also because of the hardly contrasting colours. Therefore, the verbal elements of ‘POM’ together with the figurative aspects of the sign, are co-dominant in the contested sign. Due to this, at least part of the public will only see POM POM and, regardless of the number of representations, refer to it only one. It must also be taken into account 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).

The Opposition Division notes that similarities between signs are higher where the coincidences reside in distinctive elements. For part of the consumers in the European Union, such as at least a significant part of the Swedish and Danish speakers, the verbal elements ‘POM’ and ‘Pom de la Pom’ in both signs will be perceived as having no meaning in relation to the relevant goods and services and the additional verbal element ‘Amsterdam’ in the earlier mark will be non-distinctive for reasons set out above. Therefore, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the relevant territory that will perceive the verbal elements ‘POM’ in the earlier mark and ‘Pom de la Pom’ in the contested sign as meaningless distinctive elements and the element ‘Amsterdam’ in the earlier mark as non-distinctive, such as at least part of the Swedish- and Danish speaking part of the public.

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 (or up down), which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in their initial and distinctive verbal element ‘POM’. They differ in the fact that the verbal element ‘POM de la POM’ is repeated six times in the contested sign. The signs also differ in the colours, the graphic aspects and the figurative element of the contested sign, the additional verbal element ‘de la’ in the contested sign and also in the additional word element ‘Amsterdam’ in the earlier mark, which however, all have a lesser impact for the reasons explained above.

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

Aurally, the pronunciation of the signs coincides in the sound of the distinctive initial letters and also in the ending letters of the contested sign; ’POM’. The contested sign is likely to be pronounced ‘POM POM’ because ‘de la’ is hardly visible and will only be pronounced once and not six times. The signs differ (if pronounced) in the sound of the additional non-distinctive verbal element ‘Amsterdam’ in the contested sign.

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

Conceptually, the relevant public under analysis in the relevant territory will perceive the meaning of the word element ‘Amsterdam’ in the earlier mark, as explained above, but since this element is non-distinctive and cannot indicate the commercial origin and therefore it has no impact on the conceptual comparison. The attention of the relevant public will be attracted by the additional fanciful word elements, which have no meaning. As a consequence, 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.

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 and services in question from the perspective of the relevant public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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. In the present case, the goods and services are identical and highly similar and they are directed at the public at large with an average degree of attention. The earlier mark enjoys a normal degree of distinctiveness for the relevant public under analysis. The signs are visually similar to an average degree and aurally at least similar to an average degree since they coincide in the initial and the only distinctive element of the earlier mark and in the dominant verbal element in the contested sign.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities and to safely distinguish between the signs, in particular taking into account the fact that the contested goods and services are identical and highly similar.

Considering all the above, there is a likelihood of confusion at least as regards a significant part of the public in the relevant territory, including part of the Swedish- and Danish-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only a 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. 11 890 704.

As the earlier right No. 11 890 704 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

The Opposition Division

Martina GALLE

Martin INGESSON

Katarzyna ZANIECKA

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.