OPPOSITION No B 3 033 126

Annco, Inc., 7 Times Square, New York, New York 10036, United States of America (opponent), represented by Mishcon de Reya Llp, Africa House, 70 Kingsway, London WC2B 6AH, United Kingdom (professional representative)

a g a i n s t

FF Group Romania S.R.L., str. Take Ionescu, nr. 8, Sector 1, 010354 Bucharest, Romania (applicant), represented by Cabinet M. Oproiu, 42 Popa Savu Street, Sector 1, Bucharest, Romania (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 033 126 is upheld for all the contested goods and services, namely:

Class 25: Clothing, footwear, headgear.

Class 35:The bringing together, for the benefit of others, of a variety of goods, namely clothing, footwear and accessories, clothing and footwear of leather and imitations of leather, and headgear, all being intended for use in sports activities, fitness equipment and goods and accessories therefor, gymnastic and sporting articles, foodstuffs intended for consumption in association with sports activities, being products based on plants, proteins and nutritional supplements for human consumption, all being in liquid, solid or powder form, preparations made from cereals and energy beverages, via a chain of stores and via electronic commerce (online/internet), enabling customers to conveniently view and purchase those goods.

2. European Union trade mark application No 16 709 611 is rejected for all the contested goods and services. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 709 611 for the figurative mark , namely against all the goods and services in Classes 5, 25, 28, 30, 32 and 35. In its observations of 17/08/2018, the opponent restricted the scope of the opposition to the goods and services in Classes 25 and 35 only. The opposition is based on, inter alia, European Union trade mark registration No 10 750 941 for the word mark ‘LOFT design by…’ in Classes 25 and 35. The opponent initially invoked Articles 8(1)(b), 8(4) and 8(5) EUTMR, but in its observations of 17/08/2018, it also restricted the grounds of the opposition to Article 8(1)(b) EUTMR only.

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 10 750 941 for the word mark ‘LOFT design by…’, since it covers a broad scope of goods and services, and, unlike in the other earlier rights, there are no issues regarding its validity or any proof of use request.

1. The goods and services

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

Class 25: Clothing, dresses, coats, suits, trousers, skirts, shirts, blouses, t-shirts, waistcoats, pullovers, jackets, shorts, gloves, stockings, socks, belts, scarves; pareo; sleepwear, pyjamas, dressing gowns, nightshirts; lingerie, underwear, slips, briefs, bras, underpants; peignoirs; swimming costumes, beach clothes, beach shoes; footwear (other than orthopaedic footwear), boots, ankle boots, slippers, ballerina shoes, headgear.

Class 35: […]; Retailing and bringing together, for others, of a variety of goods (excluding the transport thereof) including perfumery, cosmetics, soaps, safes, works of art, busts and figurines, manicure and pedicure sets, optical apparatus, spectacles, sunglasses, mobile telephones, accessories for mobile telephones, software, computer peripherals, audio and video cassettes, CDs, tableware of glass, porcelain or earthenware, table plates, tea caddies, containers for sweets, tea infusers, non-electric coffeepots, egg cups, household or kitchen containers, salad bowls, salt cellars, coffee services, tea services, candlesticks, de figurines, de statues, de statuettes, de vases, lighters, holders and boxes for cigars and cigarettes, cigar cases, cigarette cases, tobacco jars, powder compacts, jewellery, rings, bracelets, chains, necklaces, pendants, brooches, earrings, hair grips, medals and medallions, cuff links, watches and clocks, alarm clocks, stationery, bibs, towels and handkerchiefs, table linen, patterns for making clothing, dressmaking patterns, newspapers, books, notebooks, albums, diaries, goods of leather or imitations of leather, namely sacks and bags, luggage (except bags of textile, for packaging, and bags for the transport and warehousing of goods in bulk), travelling bags, sports bags (except fitted bags adapted to the sporting articles they are designed to hold), vanity cases (not fitted), toiletry cases (empty), handbags, beach bags, backpacks, tennis bags, gymnastic bags, fitness bags, bags for footwear, document holders, school bags, pocket wallets, card cases (notecases), purses, coin purses (not of precious metal), pouches designed to be attached to belts, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, furniture, armchairs and sofas, mirrors, picture frames, decorative wall fixtures, garment covers and hangers, pillows and straw mattresses, clothes hooks, reels (for yarn, silk, cord), textiles for textile use, household linen, table linen, bath linen, wall hangings of textile, furnishing fabrics, traced cloths for embroidery, clothing, dresses, coats, tailoring, trousers, skirts, shirts, blouses, T-shirts, waistcoats, pullovers, jackets (clothing), shorts, gloves, stockings, socks, belts for wear, headscarves, sarongs, nightwear, pyjamas, dressing gowns, nightgowns, underwear, undergarments, body suits, briefs, brassieres, knickers, bathrobes, swimsuits, beach clothes, beach footwear, footwear (except orthopaedic footwear), boots, half-boots, slippers, ballet flats, headgear, carpets, and rugs, enabling customers to conveniently view and purchase those goods in retail outlets or department stores, from general mail-order goods catalogues, or via websites, via television or via any other form of electronic telecommunications media.

The contested goods and services are the following:

Class 25: Clothing, footwear, headgear.

Class 35:The bringing together, for the benefit of others, of a variety of goods, namely clothing, footwear and accessories, clothing and footwear of leather and imitations of leather, and headgear, all being intended for use in sports activities, fitness equipment and goods and accessories therefor, gymnastic and sporting articles, foodstuffs intended for consumption in association with sports activities, being products based on plants, proteins and nutritional supplements for human consumption, all being in liquid, solid or powder form, preparations made from cereals and energy beverages, via a chain of stores and via electronic commerce (online/internet), enabling customers to conveniently view and purchase those goods.

As a preliminary remark, the applicant raises the issue of the different target public and distribution channels that allegedly distinguish the conflicting signs. In particular, the applicant claims that the opponent sells casual clothing articles for women that could be purchased on-line, whereas its stores are aimed at a specialised public, namely performance athletes that are interested in purchasing famous brands’ articles. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

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 25

Clothing, footwear, headgear are identically contained in both lists of goods. The fact that the opponent’s indication regarding footwear includes the limitation other than orthopaedic footwear does not affect this outcome taking into account that orthopaedic footwear is classified in Class 10.

Contested services in Class 35

An interpretation of the wording of the list of services in Class 35 is required to determine the scope of protection of these services.

The term ‘namely’, used in the applicant’s list of services in Class 35 to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

However, the term ‘including’, used in the opponent’s list of services in Class 35, indicates that the specific services 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).

Despite their different wording, both lists in Class 35 cover the trade of essentially identical categories of goods as regards the contested the bringing together, for the benefit of others, of a variety of goods, namely clothing, footwear and accessories, clothing and footwear of leather and imitations of leather, and headgear, all being intended for use in sports activities via a chain of stores and via electronic commerce (online/internet), enabling customers to conveniently view and purchase those goods. Therefore, these contested services overlap with the opponent’s retailing and bringing together, for others, of a variety of goods (excluding the transport thereof) including clothing, belts for wear, footwear (except orthopaedic footwear), headgear. They are, therefore, identical.

As regards the comparison of the remaining contested services and the opponent’s retailing services (i.e. services that consist of the bringing together, for the benefit of others, of a variety of goods, enabling consumers to conveniently compare and purchase those goods), the Court has held that retailing services must be worded with sufficient clarity and precision to allow the competent authorities and other economic operators to know what type of goods the applicant intends to bring together (10/07/2014, C-420/13, Netto Marken Discount, EU:C:2014:2069). Since the term ‘including’ does not restrict the opponent’s retailing services to the goods that follow, the wording of the opponent’s retailing and bringing together, for others, of a variety of goods (excluding the transport thereof) enabling customers to conveniently view and purchase those goods in retail outlets or department stores, from general mail-order goods catalogues, or via websites, via television or via any other form of electronic telecommunications media does not provide a clear indication of what goods are covered, apart from the examples introduced by the term ‘including’. Due to the vagueness of the opponent’s retailing services in general, it cannot be concluded that the services are identical. Nevertheless, the examples expressly identify part of the goods subject to the vague term of retail services, thus enabling the Opposition Division to carry out a comparison as follows:

The contested the bringing together, for the benefit of others, of a variety of goods, namely fitness equipment and goods and accessories therefor, gymnastic and sporting articles, foodstuffs intended for consumption in association with sports activities, being products based on plants, proteins and nutritional supplements for human consumption, all being in liquid, solid or powder form, preparations made from cereals and energy beverages, via a chain of stores and via electronic commerce (online/internet), enabling customers to conveniently view and purchase those goods are considered similar to the opponent’s retailing and bringing together, for others, of a variety of goods (excluding the transport thereof) including sports bags (except fitted bags adapted to the sporting articles they are designed to hold), enabling customers to conveniently view and purchase those goods in retail outlets or department stores, from general mail-order goods catalogues, or via websites, via television or via any other form of electronic telecommunications media. The services at issue have the same nature since both are retail services, with the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they may coincide in relevant public and distribution channels.

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

As already mentioned in the comparison of the goods and services, the applicant claims that the relevant public for the contested goods and services is a specialised public (performance athletes) and the level of attention is higher than normal, whereas for the earlier mark, the degree of attention as regards the average consumer is normal.

In this regard, apart from the previous indication regarding the irrelevance of the actual or intended use of the goods and services not stipulated in the list of goods and/or services, as stated by the Court, and also pointed out by the opponent, the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and the goods and services covered by the mark applied for that were found to be identical or similar (01/07/2008, T-328/05, Quartz, EU:T:2008:238, § 23; appeal dismissed 10/07/2009, C-416/08 P, Quartz, EU:C:2009:450). Therefore, the applicant’s claim must be set aside.

3. The signs

LOFT design by…
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.

All the elements of both signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since for this part of the public there is a conceptual similarity and the dissimilar concepts have less impact as further explained below.

The element ‘LOFT’ of the earlier mark will be understood by the vast majority of the relevant public as ‘an upper chamber, an attic; an apartment or chamber in general’ (information extracted from Oxford English Dictionary on 30/01/2020 at www.oed.com). Since this meaning does not bear any correlation to the goods and services concerned, it is of an average distinctive character.

The applicant claims, by referring to the last definition found in the Merriam-Webster Dictionary, that the element ‘LOFT’ standing alone (as in the earlier mark) is a technical term that will be associated by the relevant public with ‘the thickness of a fabric or insulating material (such as goose down)’ and it is, therefore, lowly distinctive or even non-distinctive since it refers to the characteristics of the fabrics, namely the thickness of a fabric or insulating material.

Firstly, it should be pointed out in this regard that an American English dictionary as Merriam-Webster does not represent the perception of the relevant English-speaking public in the European Union. Secondly, as indicated by the applicant, this meaning seems to be rather technical and the Opposition Division considers that it will be perceived as such, at most, by a very reduced part of the public.

Furthermore, in connection with the judgement cited by the applicant (17/02/2011, T-385/09, LOFT vs ANN TAYLOR LOFT, EU:T:2011:49, § 48), it is noted that this citation is decontextualized, since the conclusions of the Court regarding the distinctive character for the French public of the element ‘LOFT’ in the contested mark in comparison to the additional elements ‘ANN TAYLOR’ are not related to the technical meaning claimed by the applicant.

In its observations, the applicant also argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘LOFT’. In support of its argument the applicant refers to several trade mark registrations and to some internet extracts (most of them not referring to the relevant goods and the relevant territory).

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. Furthermore, regarding the internet extracts, on their own, they are unable to demonstrate that the relevant public considered has been exposed to widespread use of, and has become accustomed to, trade marks that include ‘LOFT’. Under these circumstances, the applicant’s claims must be set aside.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the English-speaking public who will perceive and understand ‘LOFT’ as ‘an upper chamber, an attic; an apartment or chamber in general’ since this represents a substantial part of the relevant public.

The element ‘design by…’ of the earlier mark will be understood as a mere indication that the goods have been conceived or created by somebody that is not specified or is omitted (represented by the ellipsis) and, as correctly pointed out by the applicant, it is frequently used in the market. Therefore, this expression is non-distinctive for the relevant goods and the retail of goods that are subject to a process of creation and design.

As regards the contested sign, the applicant claims that word marks should not be artificially dissected. However, it should be taken into account, firstly, that the contested mark is not a word mark and, secondly, that it is indeed visually separated by the different colours of its verbal components and also by a wider space between the two terms than between their respective letters. Furthermore, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In this regard, the contested sign will be clearly dissected into the verbal elements ‘SPORT’ and ‘LOFT’, the latter being perceived with the same meaning indicated above as regards the earlier mark.

In order to support a claim of conceptual dissimilarity between the signs and the distinctive character of the contested mark, the applicant claims, firstly, that the combination ‘SPORTLOFT/SPORT LOFT’ has no dictionary meaning and, secondly, that its mark is used for a store specialised in sporting goods (mainly clothing, footwear and headgear) in Bucharest (Romania), which will create in the public an association particularly with the meaning of ‘LOFT’ as ‘an upper room or floor: attic’ or ‘one of the upper floors of a warehouse or business building especially when not partitioned’ by reference again to the Merriam-Webster Dictionary. However, as rightly stated by the opponent, it is the perception of consumers in the European Union what is relevant for the present proceedings and, in any case, the above-mentioned general concept of ‘loft’ is equally present in the earlier mark for the vast majority of the relevant public. Therefore, this argument about the intended use of the contested mark is irrelevant.

On the other hand, the verbal element ‘SPORT’ placed at the beginning of the contested sign will be associated with ‘an individual or group activity pursued for exercise or pleasure, often involving the testing of physical capabilities and taking the form of a competitive game’. Bearing in mind that the relevant goods are clothing, footwear and headgear and that these could include sporting articles, and the relevant services are connected to the retail of sports-related goods, it is considered that this element is non-distinctive for these goods and services. The public understands the meaning of the element and will not pay as much attention to this non-distinctive element as to the other more distinctive element of the mark, namely ‘LOFT’. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

As regards the figurative element of the contested sign consisting of a spherical device in two colours with an arrow inside (according to the applicant suggesting a possible object in movement), it is considered distinctive since it has no clear meaning in connection with the goods and services concerned.

In its observations of 14/11/2018, the applicant claims that the beginning of the signs, which primarily catches the consumer’s attention, is different in the present case. Even though the applicant was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). In particular, as has been established above, in the present case the differing first verbal element of the contested sign, ‘SPORT’, is a non-distinctive element with a limited impact in the assessment of the likelihood of confusion between the marks at issue and, therefore the applicant’s claim cannot be upheld.

Contrary to the parties’ claims, neither sign has any element that could be considered clearly more dominant (visually eye-catching) than other elements. Firstly, word marks, as the earlier mark, have no dominant elements by definition and, secondly, all the elements of the contested sign have more or less a comparable visual impact, since neither of the elements can be held clearly more dominant than the others. In this regard, the spherical device of the contested mark is not the dominant element just because it appears at the beginning of the sign, as claimed by the applicant.

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). Therefore, the spherical device, slightly stylised typography and colours of the contested sign will have less impact than its verbal elements.

Visually and aurally, the signs coincide in the element ‘LOFT’, which is the most distinctive verbal element in both marks. The signs differ in the place in which this common element appears, as well as in the expression ‘design by…’ of the earlier mark and in the term ‘SPORT’ of the contested sign, both of which are non-distinctive and have, thus, a limited impact in the comparison. From a visual point of view, the signs also differ in the figurative components of the contested mark, which have less impact than the verbal elements, as already explained.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the concept of ‘LOFT’ and differ, inter alia, in non-distinctive concepts, the signs are conceptually highly similar.

As the signs have been found similar in all the aspects 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim during the substantiation period.

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 public 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.

5. 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).

In the present case, the goods and services are identical and similar. They are directed at the public at large with an average degree of attention, whereas the inherent distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree and conceptually highly similar. The most distinctive element of the earlier mark is included in the contested sign as an independent distinctive element, although it is placed in a different position within the signs, and the additional verbal elements of both marks are non-distinctive.

It should also be born in mind 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. In this regard, as indicated by the opponent, it is highly conceivable that the relevant consumer will 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 and services which it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49), in this case, related to sport-goods.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical and similar goods and services. Therefore, the relevant public may believe that these goods and services come from the same undertaking or, at least, economically-linked undertakings, particularly in the belief that the contested mark is a mere sub-brand of the earlier sign.

Considering all the above, there is a likelihood of confusion on a substantial 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 10 750 941 for the word mark ‘LOFT design by…’. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier EUTM No 10 750 941 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268) or the evidence of use submitted in relation to one of these additional earlier marks.

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, 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

Marta GARCÍA COLLADO

Eva Inés PEREZ SANTONJA

Cindy BAREL

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.