OPPOSITION No B 2 946 294

Cemsel Tekstil Sanayi Ve Ticaret Anonim Sirketi, Baglar Mahallesi, Çesme Sokak, No 43, Günesli, Bagcilar - Istanbul, Turkey (opponent), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq. 3º Izq., 28020 Madrid, Spain (professional representative)

a g a i n s t

Tuncay Gürsoy, Margaretenstraße 54, 82152 Krailling, Germany (applicant), represented by Dr. Solf & Zapf, Candidplatz 15, 81543 Munich, Germany (professional representative)

On 29/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 946 294 is upheld for all the contested goods.

2. European Union trade mark application No 16 749 715 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 16 749 715, Moreland (word mark) in Classes 14, 18 and 25. The opposition is based on, inter alia, European Union trade mark registration
No 15 404 131 MORE & CO. (word 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.

1. The goods

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

Class 14: Jewels; Ornaments [jewellery, jewelry (Am.)]; Paste jewellery [costume jewelry (Am.)]; Pins being jewelry; Ornamental pins; Pearls [jewellery, jewelry (Am.)]; Chronoscopes; Watch chains; Bracelets [jewellery, jewelry (Am.)]; Watchstraps; Cuff links; Jewel cases; Housings for clocks and watches; Alarm clocks; Key rings [trinkets or fobs]; Alloys of precious metal.

Class 18: Trunks and travelling bags; Backpacks; Casual bags; Handbags; Beach bags; Slings for carrying infants; Bags for campers; Net bags for shopping; Shopping bags; Hipsacks; Vanity cases, not fitted; Cosmetic purses; Toiletry bags; School knapsacks; Satchels; Garment bags for travel; Hides; Imitation leather; Travelling sets [leatherware]; Business card cases; Credit-card holders; Keycases; Briefbags; Attache cases; Dog leashes; Animal carriers [bags]; Luggage label holders; Hat boxes of leather; Laces (Leather -); Wallets; Purses; Collars for animals; Umbrellas; Parasols; Walking sticks; Animal skins, hides; Whips; Harnesses; Saddlery; Clothing for pets.

Class 25: Clothing; Footwear; Headgear; Belts [clothing]; Gloves [clothing].

The contested goods are the following:

Class 14: Alloys of precious metal; Jewels; Ornaments [jewellery, jewelry (Am.)]; Time instruments; Clocks; Badges of precious metal; Amulets [jewellery]; Pins [jewellery]; Bracelets [jewellery]; Wristwatches; Necklaces [jewellery]; Hat jewellery; Chains [jewellery]; Tie clips; Tie pins; Cuff links; Medals; Lockets [jewellery]; Earrings; Rings [jewellery]; Key rings [split rings with trinket or decorative fob]; Watch bands; Cases for clock- and watchmaking; Bracelets; Hoop earrings.

Class 18: Luggage, bags, wallets and other carriers; Worked or semi-worked hides and other leather; Sheets of imitation leather for use in manufacture; Leather cloth; Leather and imitations of leather; Sheets of leather for use in manufacture; Faux fur; Leather luggage straps; Labels of leather; Umbrellas and parasols; Walking sticks; Travel garment covers; Toiletry bags; Sports packs; Beach bags; Handbags; Shopping bags; Grips [bags]; Clutch bags; Coin holders; Leather pouches; Rucksacks; Attaché cases; Trunks and suitcases; Roller suitcases.

Class 25: Womens' outerclothing; Outerclothing for men; Outerclothing; Weather resistant outer clothing; Waterproof outerclothing; Babies' outerclothing; Children's outerclothing; Sportswear; Bathing suits; Foundation garments; Gloves [clothing]; Hosiery; Waist belts; Neckerchiefs; Neck scarves [mufflers]; Shawls and stoles; Footwear; Inner socks for footwear; Children's footwear; Infants' footwear; Footwear for men; Footwear for women; Boots; Ankle boots; Boot cuffs; Waterproof boots; Rubbers [footwear]; Bath slippers; Boots for sports; Cleats for attachment to sports shoes; Insoles for footwear; Headgear; Caps [headwear]; Head scarves; Ear muffs [clothing]

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 14

The contested Alloys of precious metal; jewels; ornaments [jewellery, jewelry (Am.)]; amulets [jewellery]; pins [jewellery]; bracelets [jewellery]; necklaces [jewellery]; hat jewellery; chains [jewellery]; tie clips; tie pins; cuff links; lockets [jewellery]; earrings; rings [jewellery]; key rings [split rings with trinket or decorative fob]; bracelets; hoop earrings are either identically contained in both lists of goods or are included in the broad category or overlap with the opponent’s jewellery. Therefore these goods are identical.

According to www.merriam-webster.com/dictionary/chronoscope, a chronoscope is an instrument for the precise measurement of small time intervals (as by means of a falling rod, released pendulum, or an electronic device) The contested Time instruments; Clocks; Wristwatches - which are all time measuring instruments - overlap therefore with the earlier Chronoscopes. Hence these goods are identical.

The contested medals are similar to alarm clocks as they can have the same distribution channels and producers as well as the relevant public.

The contested Badges of precious metal are similar to Jewellery of the opponent as they are complementary goods and can coincide in distribution channels, producers and the relevant public.

The contested Watch bands are similar to Chronoscopes, as they can be complementary goods and can coincide in distribution channels, producers and the relevant public.

Cases for clock- and watchmaking are similar to Housings for clocks and watches as they are complementary goods and can coincide in consumers and the producers.

Contested goods in Class 18

The contested Trunks are identically contained in both lists of goods.

The contested Luggage; Suitcases; Roller suitcases overlap with or are included in the opponent’s trunks. Therefore these goods are identical.

The contested Bags and other carriers include as a broader category the opponent’s travelling bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Travel garment covers; are identically contained in both lists of goods and are therefore identical.

The contested Sports packs; Grips [bags]; Clutch bags; Leather pouches; Rucksacks are included in the opponents list of goods or overlap with Casual bags. Therefore, these goods are identical.

Wallets; umbrellas and parasols; Walking sticks; Toiletry bags; Beach bags; Handbags; Shopping bags; Attachée cases are identically contained in both lists of goods. Therefore, these goods are identical.

The contested Coin holders overlap with the opponents Wallets. Therefore these goods are identical.

The contested Worked or semi-worked hides and other leather are included in or overlap with the opponents broad category of Hides. Therefore, they are identical.

The contested Sheets of imitation leather for use in manufacture; Leather cloth; Leather and imitations of leather; Sheets of leather for use in manufacture are at least highly similar to the opponent’s Animal skins, as they have the same purpose, can be in competition and can have the same producer. Furthermore, they can have the same distribution channels. .

The contested Faux fur is highly similar to the opponent’s Animal skins as these goods have the same nature and purpose and can have the same distribution channels and producers, as well as the same relevant public.

The contested Leather luggage straps; Labels of leather are similar to the opponents Travelling bags as they can coincide in distribution channels, the producers and the relevant public.

Contested goods in Class 25

The contested Womens' outerclothing; Outerclothing for men; Outerclothing; Weather resistant outer clothing; Waterproof outerclothing; Babies' outerclothing; Children's outerclothing; Sportswear; Bathing suits; Foundation garments; Gloves [clothing]; Hosiery; Waist belts; Neckerchiefs; Neck scarves [mufflers]; Shawls and stoles; Inner socks for footwear; Ear muffs [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested Footwear; Children's footwear; Infants' footwear; Footwear for men; Footwear for women; Boots; Ankle boots; Boot cuffs; Waterproof boots; Rubbers [footwear]; Bath slippers; Boots for sports; Cleats for attachment to sports shoes; are included in the broad category of the opponent’s Footwear. Therefore, they are identical.

The contested Headgear; is identically contained in both lists of goods. Caps [headwear]; head scarves are included in the broad category of the opponent’s Headgear. Therefore, they are identical.

The contested Insoles for footwear are similar to the opponent’s Footwear, as they are complementary to each other, can have the same producer and distribution channels and can also coincide in the relevant public.

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 different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The attention of the public may vary from average to high. Especially concerning the goods in Class 14, in its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

3. The signs

MORE & CO	Moreland
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 common element MORE 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 language-speaking part of the public such as Spain, were the common element MORE is not meaningful, as in this scenario the likelihood of confusion will be the highest.

Both signs are word marks. In the case of word marks, the word itself is protected; therefore the use of upper or lower case character is irrelevant.

The element MORE of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element of an ampersand, will be grasped immediately as it is followed by the element ‘CO’, the resulting combination of ‘& CO’, being an indication that is universally used in a commercial context to refer to the company, group or undertaking producing the goods or providing the services. Therefore, the relevant public will not pay much attention to this element and its distinctiveness, if any, is very low.

As regards the contested sign it consists of the word Moreland and has no meaning for the relevant public and is therefore, 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.

Visually, the earlier right consists of three elements, whereas the contested sign contains only one word. However they have almost the same number of letters. The signs coincide in the distinctive element ‘More’ at the beginning of both signs. However, they differ in the ampersand and CO in the earlier sign and in the element ‘Land’ in the contested sign. Given that the distinctiveness of ‘& CO’ is very low, it is concluded that the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛More’, present identically in both signs. The pronunciation differs in the sound of the ‘& CO’ and the letters ‛Land’ of the contested mark, which have no counterpart in the contested mark. Given that the distinctiveness of & CO is very low, it is concluded that the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the element ‘.& CO’ might evoke a concept, this element has a very low distinctiveness. The attention of the relevant public will be attracted by the additional distinctive verbal elements, which have no meaning. 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 weak elements in the mark, as stated above in section c) of this decision.

5. 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).

The compared goods were found to be identical and similar to various degrees. The signs are visually and aurally similar, since they coincide in the letters ‘MORE’.

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).

The overall impression that both signs will make on the relevant Spanish-speaking public in the European Union will be of similarity. The differences between the marks, consisting of the elements ‘& CO’ and ‘Land’ placed at the end of the marks, are considered insufficient to counteract such an impression. This is even the case when the level of attention would be higher than average for goods with a high price. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the case at hand, bearing in mind that the distinctive element, ‘MORE’ of the earlier mark is fully included in the contested mark, the relevant part of the public may believe that the goods come from the same or, at least, from economically linked undertakings.

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 trade mark registration No 15 404 131 MORE & CO. It follows that the contested trade mark must be rejected for all the contested goods.

As the contested sign has no meaning for the Spanish speaking public, the argument of the applicant, that ‘Moreland’ has a certain geographic meaning, is of no avail.

As the earlier European trade mark registration
No 15 404 131 MORE & CO. leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

For the sake of completeness it should be mentioned that the applicant requested that the opponent submit proof of use of some of the trade marks on which the opposition is based. After a successful continuation of proceedings, the request was filed in due time and was admissible given that several of the earlier trade marks were registered more than five years prior to the relevant date. However, the opponent did not submit any evidence concerning the use of the earlier trade marks on which the opposition is inter alia based. It did not argue that there were proper reasons for non-use either. Therefore, the opposition was only examined with respect to European Union trade mark No 15 404 131 MORE & CO (word mark), as this mark was not under any proof of use requirement.

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

Peter QUAY

Karin KLÜPFEL

Tobias KLEE

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.