OPPOSITION No B 2 971 292

Siemes Schuhcenter GmbH & Co. KG, Krefelder Str. 310, 41066 Mönchengladbach, Germany (opponent), represented by Leifert & Steffan, Burgplatz 21-22, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Vichi Sas Di Nimis Maria Teresa, Via Noiare, 4/a, 30026 Portogruaro, Italy (applicant), represented by Agazzani & Associati S.R.L., Via dell’Angelo Custode, 11/6, 40141 Bologna, Italy (professional representative).

On 22/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 971 292 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 of European Union trade mark application No 16 948 011 . The opposition is based on German trade mark registrations No 30 2012 030 994 and No 30 2017 00 92 628 (German trade mark application at the time of filing the opposition) for the word marks ‘LEONE’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based. As the Office later communicated, the earlier German trade marks were, however, not subject to proof of use. In particular, the date of filing of the contested trade mark was 04/07/2017. Therefore, neither of the earlier German trade marks had been registered for more than five years at the time of the applicant’s request. The request for proof of use was considered inadmissible as far as these earlier rights were concerned.

In addition, the opposition was also based on earlier Benelux trade mark registration No 910 475 for the word mark ‘LEONE’, in relation to which the applicant’s request for proof of use was found admissible. Nevertheless, in its communication of 22/05/2018, the opponent withdrew this earlier right and it is no longer a basis for the opposition. Therefore, the opposition will proceed with respect to only the earlier German trade marks for the word ‘LEONE’.

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.

a) The goods and services

The opposition’s scope of protection in respect of its goods and services is based on Class 18 (leather and imitation of leather goods, all type of bags and cases, fashion accessories), Class 24 (handkerchiefs of textile), Class 25 (clothing, footwear, headgear), Class 34 (pipe bags) and Class 35 (retail of the goods thereof and promotional activities).

The contested goods are the following:

Class 25: Clothing; children’s wear; shoes; headgear; denim jeans; hats; berets; gloves [clothing]; undershirts; jackets [clothing]; collar protectors; shirts; pyjamas; overcoats; footwear; sandals; skirts; coats; trousers; sweaters; boots; foulards [clothing articles]; trousers shorts; raincoats; dresses; tops [clothing]; cagoules; waist belts; sweat shirts; cravats; bathing suits; underwear.

Some of the contested goods are identical or similar to goods on which the opposition is based, in particular the opponent’s goods in Class 25. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to the goods and services of the earlier marks, which, for the opponent, is the best light in which the opposition can be examined.

b) 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. The degree of attention is average.

c) The signs

LEONE
Earlier trade marks	Contested sign

The relevant territory is Germany.

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 element ‘LEONE’, constituting the earlier marks, will be associated by most German speakers with a variation of the given male name ‘LEON’ (information extracted from Duden on 08/11/2018 at https://www.duden.de/rechtschreibung/Leon), and those who do not make that association may at least see a vague reference to it or to similar names (‘Leo’, ‘Leon’). In any event, the word ‘LEONE’ has no meaning in relation to the goods and services and is considered distinctive.

The contested sign is composed of the distinctive elements ‘Neonè De Cavana’ (meaningless as a whole), written in a cursive font. The word ‘Neonè’, being positioned on the first line and slightly bigger, is visually more striking than the words below it. It cannot, however, be ruled out that a part of the public may see the entire construction as the first name and surname of a person of foreign origin due to the grave accent, which is not common in German.

Visually and aurally, the signs coincide in the letter string ‘*EONE’, although the last letter, ‘è’, has a grave accent in the contested sign. This letter, however, will not create a major difference for the relevant public from the aural perspective, as German does not use the grave accent, and therefore it may be simply disregarded when pronounced. However, the signs differ in the first letters of their almost coinciding, so to speak, elements — ‘L’, in the earlier marks and ‘N’ in the contested sign — as well as in the additional words, ‘De Cavana’, of the contested sign, which have no counterpart in the earlier marks. Account is taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In the present case, apart from the differing first letters, the dominating verbal element of the contested sign, ‘NEONE’, and the earlier marks, ‘LEONE’, share all their remaining letters. Therefore, given these commonalities, the signs are visually and aurally similar to a low degree.

Conceptually, as established above, one of the signs may convey a meaning for the relevant consumers, whereas the other may be perceived as meaningless as a whole or be associated with a name of foreign origin. In any event, the signs are not conceptually similar. In a possible scenario in which none of the signs brings a concept to consumers, the conceptual comparison does not play any role in the assessment.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods and services are assumed to be identical and the degree of attention is considered to be average. The earlier marks enjoy a normal degree of distinctiveness.

As established above, the signs owe their similarities to the coinciding string of letters ‘*EONE’, reproducing most of the earlier marks and the first verbal element of the contested sign (albeit not including the grave accent on the last letter). However, a mere coincidence in a string of letters within a more complex mark cannot be considered sufficient in itself to lead to a likelihood of confusion. In the present case, account is taken of the fact that the average consumers tend to perceive as mark as a whole and do not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23). Furthermore, as established above, consumers tend to pay more attention to the beginnings of signs, and in the present case the signs begin with different letters. Therefore, the manner in which the coinciding letters appear in the signs is decisive when assessing whether a likelihood of confusion may occur in real market environment and in relation to identical goods and services.

Along with the previous findings, some consideration has to be given in particular to the nature of the contested goods in Class 25. Generally, in clothes shops (also in shops selling footwear and headgear) customers can themselves either choose the clothes or fashion articles 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/footwear/headgear is generally made visually. Consequently, 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, the considerable visual differences between the signs caused by the differing (first letters) or additional verbal parts (in the contested sign) are particularly relevant when assessing the present case. As remarked above, the expression ‘De Cavana’, even though it is depicted on the line below and in slightly smaller font than the word ‘Neonè’, will still be sufficiently noticed by the public; that is to say, the word ‘Neonè’ will not entirely define the visual impression created by the sign. By contrast, consumers will not single out that verbal element and will perceive it instead as part of a complex mark. In addition, it is again emphasised that the coinciding strings of letters do not appear as individually depicted elements in the signs but are incorporated into other verbal elements. Consequently, the differing first letters of the signs, ‘N’ and ‘L’, will also contribute to their overall different perceptions by consumers.

In addition, the low degrees of visual and aural similarity are further reinforced by the fact that, for the majority of German speakers, the earlier marks will create the clear concept of a male first name, whereas the other sign will either allude to a different first and second name or remain meaningless as a whole. In accordance with established case-law, a clear semantic concept in one of the signs may be sufficient to offset any visual and aural similarities between the conflicting signs. In the present case, this factor only lends support to the final conclusion on no likelihood of confusion.

The opponent also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the opponent puts forward cases in which the conflicting signs consist of single verbal elements (in particular five-letter signs), in which only the first letters of the signs differ. The Opposition Division notes that this factual outline differs considerably from the scenario in the present case, in which one of the signs consists of a single verbal element whereas the other contains three distinctive verbal elements. Therefore, the findings of the cases referred to cannot be directly applied in the present case, in which additional factors have also been assessed.

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. Therefore, the opposition must be rejected.

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

Victoria DAFAUCE MENENDEZ

Manuela RUSEVA

Volker Timo MENSING

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.