OPPOSITION No B 2 980 350

Adamo-Fashion GmbH, Wilhelmstr. 71, 72145 Hirrlingen, Germany (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Gomathy Ramaswamy, Plot No.M3-17, SAIF Zone, PO Box 9117, Sharjah, United Arab Emirates (applicant), represented by A2 Estudio Legal, C/ Alcalá 143, 3º, Derecha., 28009 Madrid, Spain (professional representative).

On 29/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 980 350 is partially upheld, namely for the following contested goods:

Class 25: Headgear; clothing; footwear; parts and fittings of clothing and footwear, included in the class.

2. European Union trade mark application No 16 973 109 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 973 109 for the figurative mark namely against all the goods in Class 25. The opposition is based on German trade mark registration No 30 159 932 and International trade mark registration No 1 303 090 designating Benelux, France and Spain, both registered for the word mark ‘ADAMO’. 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.

a) The goods

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

German trade mark registration No 301 599 32

Class 18: Leather and imitations of leather and goods made of these materials, namely bags and other containers not specifically designed for the objects being carried, and small goods of leather, in particular purses, wallets, key wallets; animal skins and hides; trunks and suit-cases, rucksacks, handbags, attaché cases, garment bags for travel; umbrellas; parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

International trade mark registration No 1 303 090

Class 18: Leather and imitations of leather and goods made of these materials, namely bags and other containers not specifically designed for the objects being carried, and small goods of leather, in particular purses, wallets, key wallets; animal skins and hides; trunks and suitcases, rucksacks, handbags, attaché cases, garment bags for travel; umbrellas; parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Headgear; clothing; footwear and parts and fittings of all the aforesaid goods, included in the class.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s lists of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s lists of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Headgear; clothing; footwear are identically contained both the contested and the opponent’s lists of goods.

The contested parts and fittings of clothing and footwear included in the class are similar to the opponent’s clothing, footwear. These goods, in addition to being complementary have the same distribution channels and producers. Finally, they target the same relevant public. Indeed, the contested parts and fittings of clothing and footwear included in the class encompass goods which are sold together, with clothing and footwear for the general public. For examples are regards clothing, bra straps, and regarding footwear, inner soles.

On the other hand, the contested parts and fittings of headgear included in the class are only bought by manufacturers of headgear for the production of the end goods. They do not have the same distribution channels as the opponent’s clothing, footwear and headgear, do not target the same end users and cannot be considered complementary, since they are not usually bought together. As they do not have the same nature and purpose, they are dissimilar to the opponent’s goods in Class 25. They are also dissimilar to the opponent’s goods in Class 18, having different nature purpose and method of use. They are neither complementary nor in competition. Furthermore, they are not sold by the same undertakings through the same distribution channels.

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 found to be identical and similar are directed at the public at large. The degree of attention is average (25/05/2012, T‑233/10, Jumpman, EU:T:2012:267, § 22).

c) The signs

ADAMO
Earlier trade marks	Contested sign

The relevant territory is composed of the Benelux, France, Germany and Spain.

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 earlier marks are composed of the single word ‘ADAMO’. The contested sign is a figurative mark consisting of the word elements ‘adamo’ and ‘LONDON’ depicted one above the other. ‘adamo’ is depicted in black stylized lower-case letters. The word ‘LONDON’ is depicted in a smaller plain typeface in upper-case letters.

As to the contested sign’s verbal element ‘LONDON’, in addition to its smaller size, it will be perceived as a descriptive indication of the origin of the marked goods, i.e. the capital of the United Kingdom. It follows that this element is descriptive of the origin of the goods and, as such, it is weakly distinctive in respect of the relevant goods, as it will simply be perceived as an informative indication of the geographical origin or destination of the goods in question (14/05/2013, T-277/11, IKFŁT Kraśnik, EU:T:2012:295, § 49; 29/10/2015, T-256/14, CREMERIA TOSCANA / La Cremeria et al., EU:T:2015:814, § 39; 04/09/2017, R 621/2017-5, JADED LONDON (fig.) / Jades et al.).

The common element ‘ADAMO’ included in both signs will be associated by part of the relevant public with a male surname or forename of Italian origin. This is also due to the fact that a famous Belgian musician is called Salvatore Adamo, a circumstance that renders this name necessarily widely known, especially in the Benelux and in France. In all circumstances, this element has no meaning in relation with the goods covered by the trade marks in dispute. Thus, it is deemed to be distinctive. Given its size, and, to its lesser extent, its position, ‘adamo’ is the dominant element of the contested sign.

Visually, the signs coincide in the word ‘ADAMO’ which is the sole element of the earlier marks and the dominant and distinctive element of the contested sign. The signs differ in the contested sign’s stylisation, and in the descriptive term ‘LONDON’, which on account of its descriptiveness and smaller size carries less weight in the comparison.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. Therefore, the fact that the first element of the contested sign and the earlier marks coincide has to be taken into account.

Hence, as regards the difference stemming from the stylisation of the contested sign, it is recalled that, when a trade mark is composed of verbal and figurative elements, the consumer is likely to focus primarily on the denominative element as a point of reference (18/02/2004, T-10/03, Contorflex, EU:T:2004:46, § 45; T-599/13, Gelenkgold EU:T:2015:262, § 53; 30/11/2015, T-718/14, W E, EU:T:2015:916, § 53; 01/03/2016, T-61/15, 1e1, EU:T:2016:115, § 61). Moreover, the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 42). Therefore, the fact that the earlier marks are in upper case is irrelevant.

Given the foregoing, the signs are similar to a high degree. Indeed, the Opposition Division cannot agree with the applicant’s assertion that the signs are visually truly different from the opponent trademarks.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‘a/da/mo’, present identically in the signs at issue. They only differ because of the presence of the weak and smaller element of the contested sign, namely ‘LONDON’. Moreover, the General Court has already assessed that, only the dominant part of the mark would normally be pronounced when enunciated by consumers. (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55).

Furthermore, as ‘LONDON’ will be perceived as an indication of origin, it is not certain that it will be pronounced (22/10/2014, R 14/2014-2, I R O PARIS (FIG. MARK) / CIRO § 29).

Given the foregoing, the signs are at least similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public for which ‘ADAMO’ will be perceived as a forename or surname, or as referring to the Belgium singer, the signs are conceptually similar to a high degree, given that this similarity is slightly balanced by the descriptive element ‘LONDON’.

On the other hand, for the part of the public for which ‘ADAMO’ is meaningless, the signs are conceptually not similar, given that the only element conveying a concept would be ‘LONDON’. Nevertheless, this ‘non similarity’ must not be overemphasised, given that it comes from an element having a fairly limited capacity to indicate the commercial origin of the relevant goods. Indeed, this sole conceptual difference is not capable of distinguishing the trade marks in question from each other (22/10/2014, R 14/2014-2, I R O PARIS (FIG. MARK) / CIRO §30).

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 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

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 to the opponent’s goods.

The earlier marks have an average degree of distinctive character.

The signs are visually similar to a high degree and aurally similar to at least a high degree. Conceptually, the signs are highly similar for part of the public and not similar for the remaining part.

The fact that the dominant and distinctive element of the contested sign is identical to the earlier marks leads to the conclusion that the signs are sufficiently similar overall to conclude that the public under analysis will 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 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 its observations, the applicant argues that there are several registrations with the word ‘ADAMO’ in the Registry, some of which coexist with the opponent’s earlier marks.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union Registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the Register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant 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 previous cases referred to by the applicant are not relevant to the present proceedings. The applicant first referred to the decision of the Board of Appeal of 20/10/2009, in the case R 692/2009-2, amival (FIG. MARK) / anibal (FIG. MARK). In this case, and unlike the present proceedings, the Board stated that conceptual differences may counteract visual and phonetic similarities. In the present case, the conceptual similarities, on the contrary, enhance the likelihood of confusion between the marks (even if only for part of the public). Indeed, although the differing element ‘LONDON’ adds a conceptual difference, this comes from an element having a fairly limited capacity to indicate the commercial origin of the relevant goods. Therefore, this sole conceptual difference is not capable of distinguishing the trade marks in question.

The applicant also referred to the decision No B161184, / WEST INDIES VANILLA. In this case and unlike in the present proceedings, the non-coinciding element, namely ‘INDIES VANILLA’ was found distinctive.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 30 159 932 and International trade mark registration No 1 303 090 designating the Benelux, France and Spain.

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

Nicole CLARKE

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.