OPPOSITION No B 2 936 873

Siemes Schuhcenter GmbH & Co. KG, Krefelder Str. 310, 41066, Mönchengladbach, Germany (opponent), represented by Leifert & Steffan Patentanwälte partG mbB, Burgplatz 21-22, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Lek Och Rörelse Holding i Luleå AB, Köpmagatan 46, 97233 Luleå, Sweden (applicant), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative).

On 29/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 936 873 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 679 805 , namely against all the goods in Class 25. The opposition is based on, inter alia, German trade mark registration No 302 012 030 994 for the word mark ‘LEONE’ and the Benelux trade mark registration No 910 475 for the word mark ‘LEONE’. 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.

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 German trade mark registration No 302 012 030 994 and the Benelux trade mark registration No 910 475.

a) The goods

The goods on which the opposition is based are, inter alia, the following, covered under both earlier marks under analysis:

Class 25: Heels, heelpieces for boots and shoes, suits, bath sandals, bath slippers, berets, motorists’ clothing, clothing, frocks, inner soles, pocket squares, mittens, football shoes, belts (clothing), gymnastic shoes, half-boots, cravats, gloves (clothing), slippers, blouses, shirts, slips (undergarments), wooden shoes, trousers, suspenders, hats, jackets (clothing), jerseys (clothing), stuff jackets (clothing), skull caps, hoods (clothing), pockets for clothing, ready-made clothing, headgear for wear, headscarves, neckties, ascots, clothing of leather, coats, pelisses, dressing gowns, muffs (clothing), caps (headwear), outer clothing, ear muffs (clothing), combinations (clothing), parkas, pelerines, furs (clothing), petticoats, pullovers, waterproof clothing, skirts, sandals, saris, scarves, sashes for wear, lace boots, fittings of metal for shoes and boots, shoes, footwear, dress shields, ski boots, underpants, socks, boots for sports, sports shoes, boots, headbands (clothing), esparto shoes or sandals, fur stoles, studs for football boots (shoes), beach clothes, beach shoes, stockings, stockings (sweat-absorbent), tights, sweaters, handkerchiefs of textile, togas, knitwear (clothing), singlets, tee-shirts, neckerchiefs in particular breast-pocket handkerchiefs; overcoats, pants, underwear, waistcoats, hosiery.

The contested goods are the following:

Class 25: Clothing; children's wear; hats; pants; vests; jogging sets [clothing]; stockings; gowns; skirts; jackets [clothing]; mufflers [clothing]; sun-tops; tee-shirts; short-sleeved or long-sleeved t-shirts; long-sleeved shirts; short-sleeve shirts; sleeveless jerseys; printed t-shirts; short-sleeved t-shirts; crew neck sweaters; crop tops.

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.

Clothing; hats; pants; stockings; skirts; jackets [clothing]; tee-shirts are identically listed in the opponent’s lists of goods of both earlier marks.

The contested children's wear; vests; jogging sets [clothing]; gowns; mufflers [clothing]; sun-tops; short-sleeved or long-sleeved t-shirts; long-sleeved shirts; short-sleeve shirts; sleeveless jerseys; printed t-shirts; short-sleeved t-shirts; crew neck sweaters; crop tops are included in the broad category of the opponent’s clothing covered by both earlier marks. Therefore, they are identical

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 average.

c) The signs

LEONE
Earlier trade mark	Contested sign

The relevant territory is Germany and the Benelux.

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).

For the German and Dutch speaking public ‘LEONE’ in the earlier marks has no meaning and is, therefore, distinctive to an average degree. The French-speaking part of the public will perceive the ‘LEONE’ of the earlier mark as a female first name. Therefore, it has no meaning in relation to the goods in question and has also an average degree of distinctiveness for this part of the public.

The element ‘LEO’ of the contested sign will be understood by the relevant public as a male first name and part of the public, at least, will perceive the apostrophe together with the letter ‘S’ as a genitive, thus indicating the possessive form. The depiction of the lion’s head will be perceived as such. The sign and its components have an average degree of distinctiveness in relation to the goods.

The marks have no elements that could be considered clearly more eye-catching (dominant) than other elements.

Visually, the signs coincide in the first three letters ‘LEO’. However, they differ in ‘NE’ of the earlier marks and in the apostrophe and the letter ‘S’ placed at the end of the word element of the contested sign. The signs differ further in the stylisation, including the colours, and in the representation of a lion of the contested sign.

While it is true, as the opponent argues, that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, it must be stressed that this argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. In the present case, the signs at issue do not contain long words and it is to be noted that the shorter a sign, the more easily the public is able to perceive all of its single elements, and even small differences can lead to a different overall impression. In the present case, the representation of a lion in the contested sign which will not remain unnoticed and the differences in the rather short words contained in the signs have a clear impact on the visual perception of the signs at issue, and therefore, they are similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LEO’, present identically in both signs. The pronunciation differs in the sound of the letters ‛NE’ in German and Dutch and ‘N’ in French (as the final letter ‘E’ will be mute) of the earlier sign and in the sound of letter ‘S’ of the contested mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the French-speaking part of the public will perceive the signs at issue as referring to different first names and perceive the additional concept of a lion in the contested sign, the signs are conceptually not similar for this part of the public. The signs are not conceptually similar for the Dutch- and German-speaking parts of the public either as these parts of the public will perceive a meaning in the contested sign, as explained above, whereas this will not be the case in relation to the earlier marks.

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 (recital 8 of the EUTMR). 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).

In the present case, the contested goods are identical to the opponent’s goods and they target the public at large whose degree of attention is average.

As seen above, the earlier marks and the verbal elements of the contested sign are relatively short. The signs are visually and aurally similar to the extent that they have the letters ‘LEO’ in common but they differ for the remainder. As seen above, for the Dutch and German-speaking public, the earlier sign does not convey any concept whereas the contested sign will be perceived as a name declined in the possessive form and additionally it refers to the concept of a lion due to the head of a lion included in the sign. The French speaking public will associate the signs with different names. Therefore, the marks have no concept in common that would lead the public to associate one with the other. In this respect, it must be taken into account that the existence of conceptual differences between signs can counteract the visual and phonetic similarities between them when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately (14/10/2003, T-292/01, ‘Bass’, § 54). In view of the foregoing, it is considered that the contested sign is not likely to bring the earlier sign to the minds of the consumers, even in relation to identical goods.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In its submissions the opponent refers to the following earlier Office decisions: B 1 805 194 (‘ZYPOS’ versus ‘ZYPRO’), B 1 782 666 (‘JOBIS’ versus ‘JOBBY’), B 1 150 186 (‘KANZI’ versus ‘KANIT’) and R 2303/2010-1 (‘NOKIA’ versus ‘NOKAS’).

However, in the present case, the previous cases referred to by the opponent are not relevant to the present proceedings as in all the previous cases the conceptual comparison bore no influence on the assessment of similarity of the signs.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark: German trade mark application No 302 017 009 262 for the word mark ‘LEONE’. Since this mark is identical to the ones that have been compared and covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna ZIOŁKOWSKA

Katarzyna ZANIECKA

Martina GALLE

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.