OPPOSITION No B 2 970 641

U-R Lab (société par actions simplifiée à associé unique), 7, Place du Chancelier Adenauer, 75016, Paris, France (opponent), represented by Ipside, 29, rue de Lisbonne, 75008, Paris, France (professional representative)

a g a i n s t

Ints It Is Not The Same, GmbH, Baarerstr. 98, 6302, Zug, Switzerland (applicant), represented by María del Carmen Llagostera Soto, Calle Muntaner, 200, Planta 5ª 4ª, 08036, Barcelona, Spain (professional representative).

On 17/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 970 641 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 885 221 for the figurative mark . The opposition is based on European Union trade mark registration No 12 228 441 for the word mark ‘UNEXPECTED’. 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 and services

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

Class 35: Organisation of exhibitions, shows, trade fairs, and events of all kinds for commercial or advertising purposes; Arranging competitions for promotional purposes with or without the awarding of prizes or rewards; Direct mail advertising (leaflets, brochures, printed matter, samples); Organisation of promotional activities to obtain customer loyalty; Organisation of regional or national promotional campaigns; Business management services relating to cards, not for financial use, for the purposes of winning customer loyalty; Sales promotion for others; Presentation and demonstration of goods and services for promotional or advertising purposes; Advertising agencies; Dissemination of advertisements on media of all kinds including digital, classified advertisements and classified job advertisements, including via the Internet; Publication of publicity texts and/or images; Direct mail advertising; Computerised file management; On-line advertising on a computer network, advertising by mail order, radio and television commercials; Publicity columns preparation; Rental of advertising time on all means of communication, rental of advertising matter, rental of advertising space, in particular on Internet networks; Advertising management; Publication of advertising prospectuses; Bringing together for commercial purposes of customers and service providers, in particular in the context of shopping centres or shopping arcades; Arranging newspaper subscriptions for others; Bill-posting services; Shop window dressing; Presentation of goods on communication media, for retail purposes; Bringing together, for others, of a variety of goods (excluding the transport thereof), namely goods in the fields of beauty care and hygiene for human beings or animals, perfumery and cosmetics, clothing and fashion accessories, textiles, haberdashery, leatherware, jewellery, horological instruments, optical goods, interior and exterior decoration, furniture, tableware, household linen, fitting out and equipping the home (interior and exterior), gardening, DIY, tools, entertainment and leisure, sport and games, travel, photography, cinema, the press and publishing, music, stationery, electric household appliances, audiovisual appliances, telecommunications, telephony (including mobile telephony) and computing, enabling customers to conveniently view and purchase those goods by any means, in particular in retail outlets, in shopping centres or in department stores, in a general merchandise catalogue by mail order, or on a website, via television or using all other kinds of electronic telecommunications media.

The contested goods and services are the following:

Class 18: Travelling handbags; Pouches; Haversacks; Coin purses, not of precious metal; Trunks and travelling bags; Luggage, bags, wallets and other carriers; Leather shoulder belts; Trunks [luggage]; Kori wicker trunks; Traveling trunks; Wallets; Casual bags; Cross-body bags; Sport bags; Garment bags for travel made of leather; Bags for campers; Roll bags; All-purpose athletic bags; Weekend bags; Gym bags; Two-wheeled shopping bags; Shoe bags; Belt bags and hip bags; Pouches for holding make-up, keys and other personal items; Kit bags; Garment carriers; Book bags; Handbags; Gentlemen's handbags; Ladies' handbags; Small clutch purses; Purses, not of precious metal; Clutch bags; Evening handbags; Knitted bags, not of precious metals; Hiking bags; Wallets including card holders; Bags made of leather; School book bags; Leather credit card wallets; Clutches [purses]; Wallets of precious metal; Satchels; Keycases; Wallets for attachment to belts; Cosmetic cases sold empty; Luggage tags [leatherware]; Banknote holders; Leather cases; Cases of imitation leather; Commutation-ticket holders; Travel garment covers; Key cases made of leather; Backpacks; Back frames for carrying children; Briefcases and attache cases; Cosmetic bags; Baby carriers worn on the body; Briefbags; Coin holders; Carriers for suits, shirts and dresses; Travelling sets; Travelling sets [leatherware]; Card cases [notecases]; Slings for carrying infants; Slings for carrying infants; Umbrellas and parasols; Walking sticks; Handbags made of leather; Leather purses; Beach bags; Shoulder belts; Sports packs; Sport bags; Vanity cases, not fitted.

Class 25: Coats; Blousons; Jackets [clothing]; Parkas; Cloaks; Blousons; Pelisses; Mackintoshes; Trousers; Trousers shorts; Skirts; Waist belts; Gowns; Sweaters; Jumpers (clothing); Cardigans; Sweaters; Sweat shirts; Shirts; Undershirts; Short-sleeved T-shirts; Polo shirts; Suits; Waistcoats; Bermuda shorts; Underwear; Tee-shirts; Leotards; Robes; Negligees; Underwear; Nighties; Pyjamas; Swimming costumes; Shawls; Sashes for wear; Neckties; Tights; Leg warmers; Scarves; Bandanas (mufflers); Stocking suspenders; Gloves of clothing; Mittens; Stockings; Socks; Footwear; Slippers; Boots; Espadrilles; Sandals; Booties; ballerinas; Sneakers; Flip-flops; Beach wraps; Pumps [footwear]; Casual footwear; Aqua shoes; Footwear [excluding orthopedic footwear]; Beach shoes; Infants' footwear; Footwear for men; Athletics shoes; Riding shoes; Non-slipping devices for footwear; Footwear not for sports; Hats; Toques [hats]; Small hats; Millinery; Fur hats; Fashion hats; Beach hats; Woolly hats; Bobble hats; Sports headgear [other than helmets]; Paper hats for use as clothing items; Caps [headwear]; Skull caps; Shower caps; Waterpolo caps; Ski hats; Nightcaps; Swimming caps; Sports caps and hats; Fezzes; Party hats [clothing]; Blouses; Tops [clothing]; Culotte skirts; Skorts; Jumper suits; Denim jeans; Denim jackets; Shorts; Sportswear; Sports bras; Sports pants; Jackets being sports clothing; Sports socks; Athletic tights; Swimming costumes; Scarves; Bathrobes; Unitards; Jumper suits; Bodies [clothing]; Blazers; Men's socks; Ponchos; Kimonos; Lounging robes.

Class 35: Retailing in shops of clothing and fashion and design accessories of all kinds; Dissemination of advertising matter; Modelling for advertising or sales promotion; Advertising; Business management; Business administration; Marketing services; Commercial information services; Retail services in relation to clothing; Retail services in relation to footwear; Retail services in relation to jewellery; Retail services in relation to sporting articles; Retail services in relation to bags; Wholesale services in relation to bags; Wholesaling of clothing; Online retail store services relating to clothing; Wholesaling of footwear; Wholesaling of jewellery; Publicity services; Direct mail advertising; Retail services connected with the sale of clothing and clothing accessories; Wholesaling in connection with the sale of clothing and clothing accessories; Organisation of trade fairs for advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Organisation of exhibitions and trade fairs for business and promotional purposes; Organisation of exhibitions and trade fairs for business and promotional purposes; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Wholesaling of headgear.

Some of the contested goods and services are identical or similar to services on which the opposition is based. For example, in Class 35, the opponent’s direct mail advertising (leaflets, brochures, printed matter, samples) are identical to the contested advertising. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large, for example clothing in Class 25, and at business customers with specific professional knowledge or expertise, for example advertising services in Class 35.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. In the present case, part of the services in Class 35 such as business management, business administration or advertising are directed at business customers and their degree of attention is expected to be high since these services usually have a clear impact on a companies’ commercial strategy and on their results.

3. The signs

UNEXPECTED
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 Opposition Division considers that the majority of the relevant public, due to its unusual vertical orientation in different lines and the use of different typeface and colours, will not read the word ‘UNEXPECTED’ in the contested sign. However, it cannot be excluded that a portion of the English-speaking part of the public will be able to perceive such word in the contested sign. The Opposition Division will assess the signs from this perspective, as this is the most advantageous scenario for the opponent. In fact, a non-English speaking consumer will not read ‘Unexpected’ in the contested sign but only a combination of letters.

The earlier mark is the word ‘UNEXPECTED’ that will be perceived as “something not expected or regarded as likely to happen”. Taking into account that the relevant services are related to exhibitions, advertising and retailing, it is not related in a way that it would undermine its distinctiveness in any clear way and is therefore considered distinctive to an average degree.

The contested sign is a figurative mark composed by the verbal element ‘Desigual’ written on top in a black typeface and where the letter ‘s’ is inverted. Below, the letters ‘Un’ in a much smaller stylised red typeface, the sequence of letters ‘EX’, ‘PE’, ‘CT’ written in three lines vertically in a standard black typeface and the letters ‘ed’ below in a much smaller stylised red typeface, all included in a grey rectangle.

As explained above, it cannot be excluded that a non-negligible part of the relevant public will perceive the word ‘UnEXPECTed’ in the combination of letters of the contested sign. As the relevant goods and services are related to clothing, accessories, retailing, advertising, business management and administration it is considered distinctive to an average degree as it has no relationship to the goods and services that could possibly impair its distinctiveness.

The element ‘Desigual’ is meaningless for the relevant public and is considered distinctive to an average degree. The grey rectangle is a basic shape that has a purely decorative function. Consequently it is considered that this element is non-distinctive and its impact is limited.

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 and from top to bottom, which makes the part placed at the left/upper part of the sign (the initial part) the one that first catches the attention of the reader. Consequently, and contrary to the applicant’s argument, although the sequence of letters ‘EX’, ‘PE’, ‘CT’ written in three lines are centred and have a bigger typeface, the verbal element ‘Desigual’ is placed at the beginning of the contested sign where the attention of the public is focussed. Therefore, the contested sign has no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘UNEXPECTED’. However in the contested sign these letters are placed in a vertical orientation and with the sequence ‘EXPECT’ written in three lines and the letters ‘Un’ above and ‘ed’ below in a much smaller and highly stylised red typeface. The signs also differ in the rest of the elements of the contested sign, namely the distinctive verbal element ‘Desigual’, placed on top and where consumers will attract their attention as explained above, and the grey rectangular background.

Therefore, and taking into account what has been said about the different impact of the elements, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘UNEXPECTED’. However, they differ in the sound of the letters ‘Desigual’, that will be firstly pronounced by consumers and with no counterpart in the earlier mark.

Therefore, it is considered that the signs are aurally similar to a lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs share the concept conveyed by the element ‘unexpected’, the signs are conceptually highly 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 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 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.

5. Global assessment, other arguments and conclusion

The goods and services were assumed to be identical. The signs are visually similar to a very low degree, aurally similar to a lower than average degree and conceptually highly similar. The level of attention of the relevant public may vary from average to high and the earlier mark has a normal degree of distinctiveness.

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). Nonetheless, in the present case, the identity among the relevant goods and services, as well as the conceptual similarity between the marks, cannot overcome the visual and aural differences, which are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.

These differences are caused by the striking depiction of the verbal element ‘UnEXPECTed’ written vertically in the contested sign and with different typeface and colours in the letters ‘Un’ and ‘ed’, and the additional elements in the contested sign, namely the verbal element ‘Desigual’ (with an inverted ‘s’), with no counterpart in the earlier mark, and the grey rectangular background. It is particularly important to note the distinctive role played by the verbal element ‘Desigual’ placed at the top of the contested sign. Therefore, the visual and aural differences between the signs are clearly perceptible and are sufficient to override the conceptual similarity.

The goods in Classes 18 and 25 are clothing and accessories. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T 117/03 T 119/03 & T 171/03, NL, EU:T:2004:293, § 50).

Therefore, for the goods in Classes 18 and 25, the strong visual differences between the signs are particularly relevant when assessing the likelihood of confusion between them and contribute to safely differentiate the signs.

For the services in Class 35, the degree of attention of the public is expected to be high so the consumers will perceive the differences between the signs and will not confuse them.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public, even for consumers displaying an average degree of attention for some of the goods and services. Therefore, the opposition must be rejected.

For the sake of completeness, this absence of confusion equally applies to the part of the public for which the verbal element ‘Unexpected’ is meaningless. This is because of the striking and unusual depiction of the sequence of letters ‘Un’, ‘EX’, PE’, ‘CT’, ‘ed’ in the contested sign, that part of the public will not perceive the aforementioned verbal element and also because the different element ‘Desigual’ conveys a meaning for part of the public. Therefore, they will perceive the signs as being even less similar.

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

Frédérique SULPICE

Jorge ZARAGOZA GOMEZ

Begoña URIARTE VALIENTE

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.