DECISION

of the First Board of Appeal

of 23 October 2019

In case R 2457/2018-1

U-R LAB (société par actions simplifiée à associé unique)
7, Place du Chancelier Adenauer 75016 Paris France	Opponent / Appellant

represented by IPSIDE, 29, rue de Lisbonne, 75008 Paris, France

v

INTS IT IS NOT THE SAME, GmbH
Baarerstr. 98 6302 Zug Switzerland	Applicant / Defendant

represented by María del Carmen Llagostera Soto, Calle Muntaner, 200, Planta 5ª4ª, 08036 Barcelona, Spain

APPEAL relating to Opposition Proceedings No B 2 970 641 (European Union trade mark application No 16 885 221)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), Ph. von Kapff (Rapporteur) and M. Bra (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 20 June 2017, INTS IT IS NOT THE SAME, GmbH (‘the applicant’) sought to register the figurative mark

for the following list of goods and services:

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.

The applicant claimed the colours:

Black; red; orange.

2. The application was published on 7 July 2017.

3. On 5 October 2017, U-R LAB (société par actions simplifiée à associé unique) (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods and services. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

4. The opposition was based on EUTM registration No 12 228 441

UNEXPECTED

filed on 16 October 2013 and registered on 26 February 2014 for the following services:

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.

5. By decision of 17 October 2018 (‘the contested decision’), the Opposition Division rejected the opposition for all the contested goods and services on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:

• 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.

• 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.

• 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 and T-171/03, NL, EU:T:2004:293, § 50).

• 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.

• 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.

6. On 14 December 2018, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 15 February 2019 and the respective deficiency regarding the provided evidence for support of the statement of ground was remedied on 14 March 2019.

7. In its response received on 13 May 2019, the opponent requested that the appeal be dismissed.

Submissions and arguments of the parties

8. The applicant’s arguments raised in the statement of grounds may be summarised as follows:

• The contested goods and services in Classes 18, 25 and 35 of the contested mark are identical or similar to the services in Class 35 of the earlier trade mark;

• The earlier trade mark as a whole has no meaning in relation to any of the goods and services at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal;

• The word ‘UNEXPECTED’ in the contested sign is immediately legible, written in black and orange on three lines, the two first and last letters being hand written and the central part in uppercase letters;

• The vertical orientation of the sign does not hinder the immediate perception of the sign ‘UNEXPECTED’;

• ‘UNEXPECTED’ in both of the signs is graphically, aurally and conceptually equal. The visualisation and wording is the same as is its conceptual meaning. Even if the figurative elements present specific details, they do not exclude the coincidences;

• The relevant public will always be induced to associate a sign, such as the contested sign, to the opponent or may also be led to think that it is a mark of the opponent, only with a new presentation;

• Any public will perceive the sign as ‘UNEXPECTED’;

• Since the word ‘UNEXPECTED” represents 2/3rds of the contested mark, the consumer will necessarily focus on it (as it is visually eye-catching) when confronted with the mark. The component ‘UNEXPECTED’, which is inherently distinctive, is immediately legible as such and is of a much bigger size than the component ‘Desigual’;

• The overall impression of the contested sign is therefore dominated by the element ‘UNEXPECTED’, which furthermore plays an independent role;

• Since the stylisation of the verbal elements in the contested sign are not particularly striking, it can be considered that that the relevant public will focus foremost on the words themselves and not on their particular stylisation. Moreover, in relation to the figurative elements, it is to be recalled that 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;

• A significant part of the relevant public (with an average attentiveness) will be misled into thinking that the goods and services bearing the contested mark and the earlier mark come from the same undertaking or, as the case may be, from undertakings that are economically linked.

9. The arguments raised in response may be summarised as follows:

• 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;

• The earlier sign is not registered for the goods in Class 18 and Class 25; although the services in Class 35 coincide, both parties have different distribution channels; the opponent is specialised in the field of technical and scientific activities;

• The signs at issue are, from a global and overall perception different; the differences can be clearly appreciated;

• The word ‘unexpected’ has a secondary character and has little originality and distinctiveness;

• The contested mark is part of large family of trade marks related to Desigual (with respect to the new collections of the trade mark); which proves that the dominant element of the mark applied for is ‘Desigual’;

• Thus, the signs are visually and orally similar to a low degree; both signs have totally different graphical representation where the word ‘Unexpected’ can be read in different ways;

• Further, the denomination ‘UNEXPECTED’ has little distinctiveness;

• Thus, there is no likelihood of association between the marks in conflict.

Reasons

10. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

11. As a transitional measure, Article 80 EUTMDR foresees that the CTMIR and BoA‑RoP shall continue to apply to ongoing proceedings until such proceedings are completed, provided that the EUTMDR does not apply in accordance with its Article 82.

12. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

13. However, the appeal is not well founded in respect of the order sought and the decision of the Opposition Division cannot be annulled. There is no likelihood of confusion on the part of the public in accordance with Article 8(1)(b) EUTMR.

Article 8(1)(b) EUTMR

Relevant public

14. 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.

15. In the present case, the contested goods are directed at the public at large and at business customers with specific professional knowledge or expertise, for example advertising services in Class 35.

16. The degree of attention, regardless of whether the public is the general or a more specialised one, must be considered to be from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. The level of attention of the professional public must be considered high since the services in Class 35 have impact on business management requiring more professional skills.

17. Since the earlier mark is an EUTM, the relevant territory is the European Union.

Comparison of the goods and services

18. The contested goods

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 attaché 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

are at most similar to a low degree to the retail services

Class 35 ‑ Bringing together, for others, of a variety of goods (excluding the transport thereof), namely goods in the fields of [ …] clothing and fashion accessories, textiles, [ …], leatherware, [ …],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

of the opponent. Even if they could be offered in the same places (like bag shops) the nature, purpose and method of use of these goods and services are not the same.

19. At first sight, the bringing together of goods for others, enabling customers to view and purchase certain goods, is not unambiguously clear. The ambiguity of the wording goes to the detriment of the opponent (09/07/2015, R 863/2011-G, Malta Cross + International + Foundation (fig.) / Malteserkreuz (fig.)). In particular it would appear that the ‘others’ are not the ‘customers’. It does not include, in the wording chosen by the opponent, the services of a normal retail store, in which the retailor offers goods to the customer, but rather is a Business to Business service in Class 35 to enable other companies to have a retail outlet. For example, the wording fits with a franchise service provider where the franchisor offers to the franchisee services of providing an assortment of goods that the franchisee offers to the customer (05/07/2006, R 397/2005‑1, PK MAX (fig.) /T.K. MAX, § 16-20, 22-27).

20. In such an event, the goods in Class 18 are dissimilar and any likelihood of confusion is excluded.

21. Even if those services were to cover retail services as understood in the judgment ‘O Store’ (24/09/2008, T‑116/06, O Store, EU:T:2008:399), based on a different wording of the services, those services are only similar to a low degree, for the reasons exposed in that judgment.

22. The same is valid for the contested goods

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 orthopaedic 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.

23. With respect to the contested services

Class 35 – Retailing in shops of clothing and fashion and design accessories of all kinds; 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; retail services connected with the sale of clothing and clothing accessories; wholesaling in connection with the sale of clothing and clothing accessories; wholesaling of headgear,

these are, as correctly stated by the opponent, similar to the opponent’s ‘bringing together (except transport) for others of goods, namely goods in the fields of clothing and fashion accessories, textiles, leatherwear, jewellery, sport and games’.

24. With respect to the contested services

Class 35 - 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,

they are identical to the broader category of the opponent’s services in

Class 35 ‑ Organisation of exhibitions, shows, trade fairs, and events of all kinds for commercial or advertising purposes.

25. The contested services

Class 35 – Dissemination of advertising matter; modelling for advertising or sales promotion; advertising; publicity services; direct mail advertising

are included or overlap with the opponent’s ‘presentation and demonstration of 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; online 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’. They are therefore identical or highly similar as correctly stated by the opponent.

26. The contested services

Class 35 – Business management, business administration

include or have a similar purpose to the specific service category ‘business management services relating to cards, not for financial use, for the purposes of winning customer loyalty’ of the opponent, therefore they are identical or highly similar.

27. The contested goods

Class 35 – Marketing services; commercial information services

are similar to ‘advertising management; sales promotion for others; sales promotion for others; presentation and demonstration of goods and services for promotional or advertising purposes’ because both services have the aim of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity.

Comparison of the marks

28. Conflicting marks have to be compared via a global appreciation of the visual, aural or conceptual similarity between them bearing in mind, in particular, their distinctive and dominant components (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

29. The earlier mark is a word mark consisting of the English word ‘UNEXPECTED’, meaning sudden, unanticipated, unforeseen, unlooked-for.

30. The contested sign is figurative and consists of the words ‘Desigual’ and UNEXPECTED, written in a peculiar way on a grey rectangular background. At the top, the word ‘Desigual’ appears in bold, lowercase letters, except for the first letter ‘D’, which is written in uppercase. The letter ‘S’ is inverted. Below the word ‘Desigual’ is a set of letters placed vertically, playing on the words ‘expect’ and ‘unexpected’ due to the different stylisation of letters, these being ‘UN’, ‘EX’, ‘PE’, ‘CT’ and ‘ED’. The initial letters ‘UN’ and the two final letters ‘ED’ are in a red handwritten print style. With regard to uppercase letters ‘EX’, ‘PE’ and ‘CT’, they are written in a bold and black typeface.

31. The Opposition Division considered that part of the relevant public, which does not speak English, will not read the word ‘UNEXPECTED’ in the contested sign due to its unusual vertical orientation on different lines and the use of a different typeface and colour. It is unlikely that a public that has no knowledge of the English language and the construction of antonyms would read the word ‘UNEXPECTED’ as opposed to ‘EXPECT’ from the style of different fonts and colours used. Even less they will consider that the word mark not claiming any colours or stylisation could be linked to the trade mark applied for. However, all the English-speaking part of the public will be able to perceive such a word in the contested sign, in spite of its vertical style and the different colour and fonts used; it i.e. ‘EXPECT’ / ‘UNEXPECTED’ being common English words. Therefore, the assessment will be based on the English-speaking public of the European Union, which is the best case scenario for the opponent.

32. Contrary to the findings of the Opposition Division, the word ‘UNEXPECTED’ which will be perceived as ‘something not expected or regarded as likely to happen’ does not have an average degree distinctive character. The term is laudatory and leads to positive connotations related to something being surprisingly good. Therefore, the term is, if not completely non-distinctive, at least evocative. Thus, the distinctiveness of the earlier sign must be considered as less than normal.

33. Consequently, contrary to the arguments of the opponent, the element characterising and identifying the contested sign is the more distinctive word element ‘Desigual’. Thus, the argument of the applicant with respect to the family of marks that are owned by it cannot be taken into consideration because it could be invoked only by the owner of the earlier rights.

Visual comparison

34. Visually, the signs coincide in the less distinctive element ‘UNEXPECTED’. They differ in the figurative stylisation in a grey rectangular background of the contested sign and the beginning of the contested sign, containing the additional initial and more distinctive element ‘Desigual’, to which usually the public will pay more attention as it reads from left to right.

35. In the present case, however, contrary to the findings of the Opposition Division, the sign will not be recognised and remembered in particular by the common element ‘UNEXPECTED’, which is less distinctive, as it refers to something surprisingly good. The signs in conflict must therefore be considered at most similar to a low degree, considering that ‘Desigual’ is the initial and more distinctive verbal element of the contested sign and given that it contains graphical elements.

36. The distinctiveness of a word element can have no relevance on the assessment of visual similarities, where the only factors which must be taken into consideration are those capable of having a specific effect on visual impressions. As regards visual impression, such factors include, for example, the size of the element concerned, its position in the sign and the additional figurative elements. In the case at hand the stylisation of the contested sign as a whole is different, even if one of its elements consists entirely of the earlier sign.

Aural comparison

37. 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 pronounced first by consumers and which has no counterpart in the earlier mark.

38. Therefore, it is correctly considered by the Opposition Division that the signs are aurally similar to a lower than average degree.

Conceptual comparison

39. Conceptually, both signs share the concept conveyed by the element ‘unexpected’, the signs are conceptually similar. However, the earlier mark does not play on the concept of ‘expect / unexpected’. It should be noted that the common element of both marks evokes positive but different connotations and has a rather low distinctive character.

Distinctive character

40. In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods for which it has been registered as coming from a particular undertaking. Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22-23).

41. The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

42. 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 but is rather evocative to something surprisingly good. Therefore, the distinctiveness of the earlier mark must be seen as less than normal, contrary to the claims of the opponent.

Likelihood of confusion

43. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16‑18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

44. The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from those of others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also seventh recital of the EUTMR). Besides that function of origin, the trade mark can perform other functions.

45. The appreciation of the likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (seventh recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

46. Such a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

47. It is noteworthy that the level of attention may also vary depending on the specific subcategory within the broader description of products, which covers goods that are sufficiently different from each other in their intended purpose, in their intended consumers (according to their price in relation to the clothing and handbags products), and in their channels of distribution.

48. In the present case, the marks are claimed for identical or similar goods. Both companies are only direct competitors with respect to the services in Class 35. With respect to the other goods in Class 18 and Class 15, the opponent’s services are dissimilar, and under the conditions pointed out above, at most only similar to a low degree. In the case at hand the opponent is not producing handbags and clothing but is active only in the field of the services in Class 35, therefore, it is involved more in the B2B business.

49. Furthermore, the visual, aural, and conceptual aspects of the marks in dispute do not all have the same weight in the global assessment of the likelihood of confusion. It is appropriate, in that respect, to examine the objective conditions under which the marks are presented on the market. The extent of the similarity or difference between the marks may depend, in particular, on their inherent qualities or the conditions under which the goods or services covered by them are offered for sale. If the goods in question are usually sold in stores where consumers choose the product themselves from the shelves and must therefore rely primarily on the image of the trade mark affixed to the product, the visual similarities between the signs will, as a general rule, be more important.

50. 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 and T-171/03, NL, EU:T:2004:293, § 50).

51. The striking depiction of the verbal element ‘UNEXPECTED’ written vertically in the contested sign and using a 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, create visual and aural differences between the signs in conflict that outweigh the presence of the common less distinctive element ‘UNEXPECTED’. 

52. Therefore, it is unlikely for the relevant consumer to consider that the relevant competitors are economically-linked undertakings based on the use of the common low distinctive element ‘Unexpected’ for the contested goods and services, as it will rather remember the initial word element ‘Desigual’ as a reference to the trade origin. This is particularly true considering that the play on the words ‘expect / unexpected’ is not understood as referring to the business origin of the goods or services.

53. It follows that there is no likelihood of confusion between the earlier trade mark and the trade mark applied for and the contested decision of the Opposition Division is confirmed.

Costs

54. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and appeal proceedings.

55. As to the appeal proceedings these consist of the applicant’s costs of professional representation of EUR 550.

56. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to pay EUR 550 for the applicant’s costs in the appeal proceedings. The total amount to be paid by the opponent in the opposition and appeal proceedings is EUR 850.

Signed Th. M. Margellos

Signed Ph. von Kapff

Signed M. Bra

Registrar: Signed H.Dijkema