OPPOSITION No B 2 979 774

Navima Calzados, S.L., C/Charles Robert Darwin, nº 28 (Parque Tecnologico), Paterna (Valencia), Spain (opponent), represented by Elisa Peris Despacho Profesional, S.L., C/ Profesor Beltran Baguena, Nº 4, of. 116 (Edificio Trade Center), 46009, Valencia, Spain (professional representative)

a g a i n s t

Grenzenlos direkt Handels-GmbH, Gärberbach 9, Gewerbepark, 6020, Innsbruck, Austria (applicant), represented by Terence Klee, Leopoldstraße 20, 6020, Innsbruck, Austria (professional representative).

On 19/09/2018, the Opposition Division takes the following

DECISION:

1. The applicant’s request for restitutio in integrum is rejected.

2. Opposition No B 2 979 774 is partially upheld, namely for the following contested goods:

Class 18: Casual bags; sport bags; backpacks; keycases; key bags; pouches for holding make-up, keys and other personal items; leather purses; leather wallets; leather coin purses; bags made of leather; clutch bags; bags for sports clothing; bumbags; hipsacks.

Class 25: Clothing; footwear; athletics shoes; shorts; polo knit tops; belts [clothing]; ladies’ clothing; menswear; vest tops; jackets [clothing]; rainproof jackets; jackets being sports clothing; polar fleece jackets; snowboard jackets; warm-up jackets; men’s and women’s jackets, coats, trousers, vests; headgear; caps [headwear]; thermal headgear; sports headgear [other than helmets]; skull caps; socks; water socks; gloves [clothing]; shirts; outerclothing; waterproof outerclothing; trousers; leggings [trousers]; waterproof trousers; ski trousers; snowboard trousers; neck scarfs [mufflers]; sports pants; pants; briefs; tee-shirts; printed t-shirts; dresses made from skins; leather shoes; golf caps; golf footwear; golf shorts; polo shirts; neckerchiefs; anti-perspirant socks; lingerie; ladies’ underwear; pumps [footwear]; inner socks for footwear; footwear for women; boots; ankle boots; snowboard shoes; rain boots; underwear; tap pants; snow boots; visors [headwear]; cloaks; shawls; ponchos; pantsuits; casual trousers; suspenders; culotte skirts; trousers of leather; sweatpants; denims [clothing]; down jackets; fleeces; windproof clothing; rubbers [footwear]; hunting boots; insoles [for shoes and boots]; sweaters; coats; car coats; trench coats; coats for women; coats of denim; cotton coats; gowns; mufflers [clothing]; fashion hats; waist belts; belts made out of cloth; leather belts [clothing]; sandals; sandal-clogs; stockings.

3. European Union trade mark application No 16 864 621 is rejected for all the above goods. It may proceed for the remaining goods.

4. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 864 621 for the figurative mark , namely against all the goods in Classes 14, 18 and 25. The opposition is based on European Union trade mark registration No 8 909 021 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

RESTITUTIO IN INTEGRUM

On 19/03/2018, the Opposition Division forwarded the opponent’s further facts, evidence and arguments in support of the opposition to the applicant and invited it to submit its observations in reply on or before 24/05/2018. However, the applicant did not submit any observations in reply on or before this deadline.

On 30/05/2018, the applicant submitted a request for restitutio in integrum, together with its observations, in relation to the time limit for submitting its observations in reply and asked that the Office take into consideration the documents submitted along with its observations submitted on 30/05/2018.

The applicant explained that, due to a secretarial error, the deadline for submission had been missed. The request for restitutio in integrum was accompanied by a copy of the representative’s calendar.

According to Article 104(1) EUTMR, any party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis the Office shall, upon application, have its rights re-established if the non-observance in question has the direct consequence of causing the loss of any right or means of redress.

According to Article 104(2) EUTMR, the application must be filed in writing within two months of the removal of the cause of non-compliance with the time limit. The omitted act must be completed within this period. The application will only be admissible within the year immediately following the expiry of the unobserved time limit.

According to Article 104(3) EUTMR, the application must state the grounds on which it is based and must set out the facts on which it relies. It will not be deemed to be filed until the fee for re-establishment of rights has been paid.

a) Payment of the fee for the application for restitutio in integrum

In accordance with Article 104(3) EUTMR, the application for restitutio in integrum is deemed to be filed once the fee for re-establishment of rights has been paid.

The fee must be paid within two months of the removal of the cause of non‑compliance and not later than one year after expiry of the unobserved time limit.

The application for restitutio in integrum was received on 30/05/2018. In the same application, the applicant mentioned that the fee had been transferred to the EUIPO. This fee reached the Office on 04/06/2018. The application for restitutio in integrum is, therefore, deemed to have been filed on 04/06/2018.

b) The admissibility of the request for restitutio in integrum

Article 104(2) EUTMR requires that a request for restitutio in integrum be submitted within two months of the removal of the cause of non-compliance with the time limit and within the year immediately following the expiry of the unobserved time limit, which in the present case corresponds to the applicant’s time limit to submit its observations, which ended on 24/05/2018.

The applicant filed a request for restitutio in integrum on 30/05/2018, but, since the fee reached the Office on 04/06/2018, the application for restitutio in integrum is deemed to have been filed on 04/06/2018. That date is less than two months after the non-compliance with the time limit and within the year following the expiry of the original deadline, which is due to expire on 24/05/2019.

Finally, as required by Article 104(2) EUTMR, the omitted act, that is, submitting observations in reply by the applicant, is deemed to have been completed within the two-month period beginning on 30/05/2018, as the letter, including the applicant’s observations, was received by the Office on 30/05/2018.

The application does not refer to a time limit excluded from restitutio in integrum pursuant to Article 104(5) EUTMR.

Consequently, the application for restitutio in integrum is deemed admissible.

c) The substance of the request for restitutio in integrum

Under the terms of Article 104(1) EUTMR, for an application for restitutio in integrum to be granted, the following requirements must be met:

i. the person requesting the restitutio in integrum has been unable to comply with a time limit vis-à-vis the Office;

ii. the non-observance of the time limit has the direct consequence, by virtue of the provisions of the Regulation, of causing the loss of any right or means of redress; and

iii. the time limit has not been observed, in spite of all due care required by the circumstances having been taken.

i. Non-observance of a time limit

One of the basic requirements for a request for restitutio in integrum to be granted is that the party to the proceedings ‘was unable to observe a time limit vis-à-vis the Office’.

The applicant was given until 24/05/2018 to submit its observations in reply. The applicant filed documents, including its observations, but these reached the Office only on 30/05/2018, that is, after the expiry of the applicant’s time limit.

It follows from the above that the applicant was not able to observe a time limit vis-à-vis the Office.

ii. Loss of right

Another basic requirement for an application for restitutio in integrum to be granted is that the non-observance of a time limit has caused a loss of right.

In these proceedings, due to not complying with the time limit given by the Office, the applicant has lost the right to file its observations in reply to the opposition and so to be heard in the course of the opposition proceedings. In practice, this means that the applicant’s observations will not be taken into account in the present proceedings.

iii. Due care

In order for the restitutio to be granted, the party must have taken all due care required by the circumstances to observe the time limit.

Restitutio implies a duty of diligence for the parties, which extends to the duly authorised professional representatives. The standard of due care required of a representative to avoid the loss of rights due to a missed deadline will generally be higher than for a party to the proceedings before the Office. Careful consideration of the time limits is part of the basic duties of a trade mark attorney or professional representative. The representative must maintain a system of internal control and monitoring of time limits that generally excludes the involuntary non-observance of time limits. It follows that restitutio in integrum may be granted only in the case of exceptional events, which cannot be predicted from experience (13/05/20009, T‑136/08, Aurelia, EU:T:2009:155, § 26).

Therefore, the Opposition Division has to ascertain whether or not the applicant’s representative took ‘all due care required by the circumstances’ to avoid a loss of rights.

In its request for restitutio in integrum, the applicant’s representative mentions the following: ‘Due to a secretarial error, the deadline for submission has been missed. In the offices of the representative, deadlines for submissions in all matters are always entered into the office calendar in red colour. Simple reminders, which are not connected to a deadline are entered in the calendar in blue or black writing. Unfortunately, and despite of all reasonable and constant diligence, the said deadline

(May 24, 2018) by mistake was — unexplicably — entered in the office calendar for May, 23, 2018 in blue writing and thus on the due date the deadline was not recognized as such in time, but only per date of this notice to the EUIPO. Despite of all regular care, in this (first case ever in the representatives office) the deadline was missed.’ This request was accompanied by a copy of the representative’s calendar.

A trade mark attorney or professional representative has to manage his or her office in a way that ensures that, in the normal course of business and according to his or her instructions, time limits cannot be missed. To avoid mistakes, he or she has to do everything possible within what is considered usual under the circumstances. In particular, he or she has to provide for an effective system of review of all time limits.

In particular, when using a computerised reminder system, the due care required by the circumstances demands that the system should be capable of detecting and correcting any foreseeable error in both the performance of the tasks of the staff and the functioning of the computerised system (13/05/2009, T‑136/08, Aurelia, EU:T:2009:155, § 27).

Having examined the applicant’s request and explanation, the Opposition Division finds that the reasons set forth are not sufficient under the terms of Article 104(1) EUTMR and it is concluded that all due care has not been taken to comply with the deadline.

The applicant does not claim any exceptional circumstances or unforeseeable events that led to the mistake in question. In the absence of any truly exceptional reasons that might justify the error, the Opposition Division considers that the applicant’s representative, who was responsible for submitting the evidence in the present opposition proceedings, did not show all due care in ensuring that all the relevant data were submitted within the time limit. Likewise, it has not been proven that there were exceptional circumstances and unforeseeable events that led to this error.

The Opposition Division is of the opinion that a human error in the management of files on the part of the applicant’s professional representative, such as the omission of a deadline, cannot be considered exceptional circumstances.

d) Conclusion

Taking into account the evidence and explanation given by the applicant’s representative, the Opposition Division concludes that the applicant’s representative did not show that there were exceptional circumstances that were beyond its control and that it had taken ‘all due care required by the circumstances’ to avoid a loss of right. Therefore, the Opposition Division rejects the request for restitutio in integrum and will not take into account the documents filed on 30/05/2018.

The purpose of Article 104 EUTMR is to provide applicants and EUTM proprietors with the possibility to remedy an omission due to exceptional and unforeseeable circumstances, but not to remedy simple negligence or errors on the part of the applicant or its representative. This is an exceptional institution and the conditions for its application have to be construed strictly.

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 25: Clothing, footwear except children’s footwear, headgear; except underwear and swimwear.

Class 35: Commercial retailing and retailing via computer networks of footwear except children’s footwear and ready-made clothing.

Class 39: Storage, transport, supply and distribution of footwear except children’s footwear and ready-made clothing.

The contested goods are the following:

Class 14: Clocks; ornaments [jewellery, jewelry (am)]; paste jewellery [costume jewelry (am)]; jewellery, clocks and watches; bracelets [jewellery, jewelry (am)]; paste jewellery [costume jewelry (am)]; chains [jewelry]; jewels; housings for clocks and watches; clocks and watches, electric; dress watches; chronographs [watches]; watchstraps; watch fobs; watch cases; presentation boxes for watches; watch cases; clocks and watches; chronometers; jewelry boxes; gemstones; jewel cases; precious jewellery; ornamental pins; pendants; medallions; pearls [jewellery]; paste jewellery [costume jewelry (am)]; bracelets [jewellery, jewelry (am)]; jewellery made of precious metals; presentation boxes for jewelry; ornamental figurines made of precious metal; jewelry for the head; rings [jewellery, jewelry (am)]; articles of jewellery coated with precious metals; jewellery in the form of beads; jewellery being articles of precious metals; dress ornaments in the nature of jewellery; parts and fittings for jewellery; ear ornaments in the nature of jewellery; earrings; imitation jewellery ornaments; decorative brooches [jewellery]; gold plated brooches [jewellery]; rings [jewellery, jewelry (am)]; key rings [split rings with trinket or decorative fob]; key chains as jewellery [trinkets or fobs]; necklaces [jewellery]; necklace charms; body jewellery; amulets [jewellery, jewelry (am)]; women’s jewelry; clocks and watches; watches for outdoor use; parts for clockworks; watchstraps made of leather; leather key fobs; pendant watches.

Class 18: Suitcases; travelling sets [leatherware]; casual bags; leather and imitation leather; briefcases [leather goods]; sport bags; backpacks; traveling trunks; keycases; key bags; pouches for holding make-up, keys and other personal items; straps for soldiers’ equipment; leather suitcases; leather purses; leather cloth; briefcases [leather goods]; leather wallets; leather coin purses; trimmings of leather for furniture; golf bag tags of leather; golf umbrellas; bags made of leather; clutch bags; bags for sports clothing; bumbags; luggage; travel baggage; garment bags for travel; hipsacks.

Class 25: Clothing; footwear; athletics shoes; shorts; polo knit tops; belts [clothing]; ladies’ clothing; menswear; vest tops; jackets [clothing]; rainproof jackets; jackets being sports clothing; polar fleece jackets; snowboard jackets; warm-up jackets; men’s and women’s jackets, coats, trousers, vests; headgear; caps [headwear]; thermal headgear; sports headgear [other than helmets]; skull caps; socks; water socks; gloves [clothing]; shirts; outerclothing; waterproof outerclothing; trousers; leggings [trousers]; waterproof trousers; ski trousers; snowboard trousers; neck scarfs [mufflers]; sports pants; pants; briefs; tee-shirts; printed t-shirts; dresses made from skins; leather shoes; golf caps; golf footwear; golf shorts; polo shirts; neckerchiefs; anti-perspirant socks; lingerie; ladies’ underwear; pumps [footwear]; inner socks for footwear; footwear for women; boots; ankle boots; snowboard shoes; rain boots; underwear; tap pants; snow boots; visors [headwear]; cloaks; shawls; ponchos; pantsuits; casual trousers; suspenders; culotte skirts; trousers of leather; sweatpants; denims [clothing]; down jackets; fleeces; windproof clothing; rubbers [footwear]; hunting boots; insoles [for shoes and boots]; sweaters; coats; car coats; trench coats; coats for women; coats of denim; cotton coats; gowns; mufflers [clothing]; fashion hats; waist belts; belts made out of cloth; leather belts [clothing]; sandals; sandal-clogs; stockings.

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 clocks; ornaments [jewellery, jewelry (Am.)]; paste jewellery [costume jewelry (Am.)]; jewellery, clocks and watches; bracelets [jewellery, jewelry (Am.)]; chains [jewelry]; jewels; housings for clocks and watches; clocks and watches, electric; dress watches; chronographs [watches]; watchstraps; watch fobs; watch cases; presentation boxes for watches; clocks and watches; chronometers; jewelry boxes; gemstones; jewel cases; precious jewellery; ornamental pins; pendants; medallions; pearls [jewellery]; jewellery made of precious metals; presentation boxes for jewelry; ornamental figurines made of precious metal; jewelry for the head; rings [jewellery, jewelry (Am.)]; articles of jewellery coated with precious metals; jewellery in the form of beads; jewellery being articles of precious metals; dress ornaments in the nature of jewellery; parts and fittings for jewellery; ear ornaments in the nature of jewellery; earrings; imitation jewellery ornaments; decorative brooches [jewellery]; gold plated brooches [jewellery]; key rings [split rings with trinket or decorative fob]; key chains as jewellery [trinkets or fobs]; necklaces [jewellery]; necklace charms; body jewellery; amulets [jewellery, jewelry (Am.)]; women’s jewelry; watches for outdoor use; parts for clockworks; watchstraps made of leather; leather key fobs; pendant watches are dissimilar to the opponent’s goods and services in Classes 25, 35 and 39. They have different natures, purposes and methods of use. They are neither complementary nor in competition. Their producers are different and they are sold in different outlets (12/02/2015, T‑505/12, B, EU:T:2015:95, § 36-80).

Contested goods in Class 18

The contested casual bags; sport bags; backpacks; keycases; key bags; pouches for holding make-up, keys and other personal items; leather purses; leather wallets; leather coin purses; bags made of leather; clutch bags; bags for sports clothing; bumbags; hipsacks are similar to the opponent’s clothing; except underwear and swimwear in Class 25. These goods are made by the same producers and are sold in the same outlets. Furthermore, they target the same relevant public.

The contested suitcases; travelling sets [leatherware]; leather and imitation leather; briefcases [leather goods]; traveling trunks; golf bag tags of leather; straps for soldiers’ equipment; leather suitcases; leather cloth; trimmings of leather for furniture; golf umbrellas; luggage; travel baggage; garment bags for travel are dissimilar to the opponent’s goods and services in Classes 25, 35 and 39. These goods and services are different in nature, purpose and method of use. Furthermore, they are neither in competition nor complementary. Furthermore, they are not produced by the same consumers and are not sold in the same outlets.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s clothing; except underwear and swimwear. 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 footwear includes, as a broader category, the opponent’s footwear except children’s footwear. 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 athletics shoes; leather shoes; golf footwear; pumps [footwear]; footwear for women; boots; ankle boots; snowboard shoes; rain boots; snow boots; rubbers [footwear]; hunting boots; sandals; sandal-clogs are included in the broad category of, or at least overlap with, the opponent’s footwear except children’s footwear. Therefore, they are identical.

The contested shorts; polo knit tops; belts [clothing]; ladies’ clothing; menswear; vest tops; jackets [clothing]; rainproof jackets; jackets being sports clothing; polar fleece jackets; snowboard jackets; warm-up jackets; men’s and women’s jackets, coats, trousers, vests; gloves [clothing]; shirts; outerclothing; waterproof outerclothing; trousers; leggings [trousers]; waterproof trousers; ski trousers; snowboard trousers; neck scarfs [mufflers]; sports pants; pants; briefs; tee-shirts; printed t-shirts; dresses made from skins; golf shorts; polo shirts; neckerchiefs; cloaks; shawls; ponchos; pantsuits; casual trousers; suspenders; culotte skirts; trousers of leather; sweatpants; denims [clothing]; down jackets; fleeces; windproof clothing; sweaters; coats; car coats; trench coats; coats for women; coats of denim; cotton coats; gowns; mufflers [clothing]; waist belts; belts made out of cloth; leather belts [clothing] are included in the broad category of the opponent’s clothing; except underwear and swimwear. Therefore, they are identical.

Headgear is identically contained in both lists of goods.

The contested caps [headwear]; thermal headgear; sports headgear [other than helmets]; skull caps; golf caps; visors [headwear]; fashion hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested socks; water socks; anti-perspirant socks; lingerie; ladies’ underwear; inner socks for footwear; underwear; tap pants; stockings are similar to the opponent’s clothing; except underwear and swimwear. These goods have the same nature and method of use. In addition, they are sold side by side in the same outlets and come from the same kind of undertaking. Furthermore, they target the same relevant public.

The contested insoles [for shoes and boots] are similar to the opponent’s footwear except children’s footwear. These goods, in addition to being complementary, have the same distribution channels and end users.

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 are directed at the public at large.

The degree of attention is average.

3. 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 Spanish-speaking part of the public, as, from an aural point of view, the letters ‘B’ and ‘V’ after a vowel are pronounced the same, both as a soft ‘B’ (11/05/2018, R 1533/2017-1, ISAVE / ISABEL et al., § 26). Therefore, the degree of aural similarity between the signs will be higher in Spanish than in other languages, in which these letters will be pronounced differently.

The marks at issue are figurative marks containing word elements. The earlier mark consists of the word element ‘BIBI LOU’ depicted in black upper case letters.

The contested mark contains the word elements ‘VIVI’ and ‘LOU’ depicted in black upper case letters. The words ‘VIVI’ and ‘LOU’ are separated by a figurative element that will be perceived as a stylised ampersand. At the top, there are two human profiles that look like two wings.

The word elements ‘VIVI & LOU’ and ‘BIBI LOU’ are meaningless for the relevant public and have an average degree of distinctive character.

The figurative element of the contested mark has no relation to the contested goods and has an average degree of distinctive character, because of its peculiar depiction.

There is no element that can be considered more dominant than other elements in either of the marks.

Visually, the signs coincide in the sequence of letters ‘*I*I LOU’ and in the fact that the word elements are depicted in black upper case letters. However, they differ in their respective first and third letters, namely ‘B’ and ‘B’ in the earlier mark and ‘V’ and ‘V’ in the contested sign, as well as in the ampersand and the figurative element of the contested sign. The signs further differ insofar as the contested sign’s word element does not contain dots above the letters ‘I’.

When a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more significant than the latter, because the average consumer will more easily refer to the goods in question by quoting the verbal element rather than by describing the figurative element of the trade mark. In the present case, the typeface of the marks at issue is relatively standard and is not likely to catch the consumers’ attention.

Considering the above, the signs are visually similar to an average degree.

Aurally, as already indicated, the letters ‘B’ and ‘V’ have the same pronunciation. The contested mark would be pronounced ‘BIBI-Y-LOU’, since the ampersand would be read by Spanish speakers as ‘y’, whereas the earlier mark will be pronounced ‘BIBI LOU’.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element as explained above, namely as two human profiles, the other sign has no meaning in that territory. Since one of the signs 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.

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.

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.

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 contested goods are partly identical, partly similar and partly dissimilar. The signs are visually similar to an average degree and aurally similar to a high degree. The signs are conceptually not similar.

The earlier mark has an average degree of distinctive character. The relevant public will display an average degree of attention.

The fact that the signs at issue have five out of their seven letters in common (and in the same order) leads to the conclusion that the signs are sufficiently similar overall that the public under analysis might believe that the goods found to be identical or similar have the same trade origin or that the undertakings in question are economically or industrially linked. This is the case in particular given that the relevant sector is the fashion industry, as it is not uncommon in this industry for the same mark to be configured in various ways according to the products it designates. In that sector, it is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various clothing lines from one another, in particular female and male clothing (25/05/2012, T‑233/10, Jumpman, EU:T:2012:267, § 53).

In addition, even if it were necessary to find that, in respect of the goods covered by the marks in question in Classes 18 and 25, the visual aspect is more important at the time that those goods are purchased, the fact remains that the phonetic aspect is also still relevant to the assessment of the likelihood of confusion. Not only may the importance of certain visual dissimilarities be diminished by the fact that average consumers only rarely have the chance to make a direct comparison between the different marks at issue, and must rely on their imperfect recollection of them, but, in addition, the consumers may be prompted to choose goods from the categories in question in response to a television advertisement, for example, or because they have heard them being spoken about, in which cases they might retain the phonetic impression of the mark in question as well as the visual aspect (04/06/2013, T‑514/11, Betwin, EU:T:2013:291, § 74).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michaela SIMANDLOVA

Birgit FILTENBORG

Julie, Marie-Charlotte HAMEL

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.