OPPOSITION No B 2 986 225

Closed Holding GmbH, Strassenbahnring 6, 20251, Hamburg, Germany (opponent), represented by Nesselhauf Rechtsanwälte, Alsterchaussee 40, 20149, Hamburg, Germany (professional representative)

a g a i n s t

Round Channel S.r.l.s., Vicolo del Guasto 8, 37121, Verona, Italy (applicant), represented by Ruffini Ponchiroli E Associati S.R.L., Via Caprera, 6, 37126, Verona, Italy (professional representative).

On 30/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 986 225 is partially upheld, namely for the following contested goods:

Class 18: Casual bags; Suitcases; Umbrellas; Attache cases; Slings for carrying infants; Beach bags; Wallets; Bags for campers; Boxes of leather or leatherboard; Boxes of vulcanised thread; Net bags for shopping; Shopping bags; Purses; Suitcases; Handbags; Card cases [notecases]; Garment bags for travel; Vanity cases, not fitted; Leather, unworked or semi-worked; Music cases; Umbrellas; Traveling trunks; Trunks [luggage]; Travelling sets [leatherware]; Holdalls; Butts [parts of hides]; Backpacks; Umbrella covers; Keycases; School knapsacks; Satchels; Leather shoulder belts; Parasols; Sport bags.

Class 25: Clothing, footwear, headgear.

2. European Union trade mark application No 17 073 024 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 some of the goods of European Union trade mark application No 17 073 024, for the figurative mark , namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 298 406 and German trade mark registration No 30 459 722 for the word marks ‘CLOSED’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 298 406.

a) The goods

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

Class 18: Bags, handbags, suitcases, wallets, purses, satchels, briefcases, gents' handbags, trunks; skins and hides and goods made of skins and hides, leather and goods of leather, imitations of skins and hides and of leather and goods of the aforesaid materials; umbrellas, walking sticks; harness and other articles of saddlery.

Class 25: Dresses of skins and hides; clothing for men, women and children, shirts, blouses, skirts, jackets, trousers, shorts, vests, jumpers, pyjamas, shoes, socks, sports jerseys, corsets, suspender belts, pants, combinations, slippers, hats, collar protectors; scarves, ties, waterproof clothing, topcoats, coats, swimming costumes, sports suits, anoraks, salopettes, belts; jackets; trousers, skirts, combinations; brassieres; jeans; shorts; swimming costumes, shirts, jumpers (shirt fronts); sports jerseys; jumpers; hats; socks; stockings; shoes in general, anoraks; topcoats; waterproof clothing; coats; sportswear, scarves, hosiery; salopettes, neckties.

The contested goods are the following:

Class 18: Casual bags; Suitcases; Umbrellas; Attache cases; Slings for carrying infants; Beach bags; Wallets; Bags for campers; Boxes of leather or leatherboard; Boxes of vulcanised thread; Net bags for shopping; Shopping bags; Purses; Suitcases; Handbags; Card cases [notecases]; Garment bags for travel; Vanity cases, not fitted; Leather, unworked or semi-worked; Music cases; Umbrellas; Umbrella handles; Traveling trunks; Trunks [luggage]; Travelling sets [leatherware]; Holdalls; Butts [parts of hides]; Backpacks; Umbrella covers; Keycases; School knapsacks; Satchels; Leather shoulder belts; Parasols; Sport bags.

Class 25: Clothing, footwear, headgear.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18

Satchels; purses; suitcases (listed twice); handbags; umbrellas; wallets; traveling trunks; trunks [luggage] are identically contained in both lists of goods (despite minor differences in their wording).

The contested boxes of leather or leatherboard; boxes of vulcanised thread; overlap with the opponent’s trunks (large, strong cases or boxes used for storing things or for taking on a journey). Therefore, they are considered identical.

The contested butts [parts of hides]; leather, unworked or semi-worked are included, or overlap with, the opponent’s skins and hides. Therefore, they are identical.

The contested casual bags; attache cases; beach bags; bags for campers; net bags for shopping; shopping bags; garment bags for travel; travelling sets [leatherware]; holdalls; backpacks; school knapsacks; sport bags are all luggage and carrying bags that are at least similar to the opponent’s bags. The goods have the same nature and purpose, use the same distribution channels, target the same relevant public and are produced by the same companies.

The contested card cases [notecases] are similar to the opponent’s wallets. The goods have the same nature and purpose, use the same distribution channels, target the same relevant public and are produced by the same companies.

The contested leather shoulder belts are similar to the opponent’s handbags. They share the same distribution channels and are directed at the same consumers. They are also provided by the same manufacturers.

The contested umbrella covers are similar to the opponent’s umbrellas. They target the same relevant public, have the same distribution channels and are produced by the same companies. Moreover, the goods are complementary

The contested parasols are similar to the opponent’s umbrellas. The goods have the same nature and purpose, use the same distribution channels, target the same relevant public and are produced by the same companies.

The contested vanity cases, not fitted; music cases; keycases are similar to a low degree to the opponent’s bags. The goods have the same distribution channels, target the same relevant public and are produced by the same companies.

The opponent’s goods made of skins and hides and the contested slings for carrying infants coincide in their nature as they all could be goods made of leather or another skin. Their purpose, in the broadest sense, may also be the same in that they are for carrying a living being from one place to another. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

The opponent’s goods include luggage and carrying bags, leather and imitations of leather and sticks and saddlery in Class 18 and clothing, footwear and headgear in Class 25. The remaining contested umbrella handles are parts attached to umbrellas meant to be held by the user. These are considered very different from the umbrella units they may be parts of; rather, the contested umbrella handles will target specific professional customers from the relevant accessory industry and not the general public; therefore, they will be available through professional distribution channels for the umbrella’s industry. Therefore, these goods are considered dissimilar to all of the opponent’s goods.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s clothing for men. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested footwear includes, as a broader category, the opponent’s shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear includes, as a broader category, the opponent’s hats. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 or similar are directed at the public at large, for example clothing, and at business customers with specific professional knowledge or expertise, for example leathers.

The degree of attention is average.

c) The signs

CLOSED
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case the Opposition Divisions finds it appropriate to focus the comparison on the Italian- and Spanish-speaking part of the public for which the marks are meaningless and, therefore, this has an impact in the conceptual comparison between the signs.

The earlier marks are the word ‘CLOSED’ that is meaningless for the vast majority of relevant public and therefore distinctive to an average degree.

The contested sign is a figurative mark composed by one single verbal element ‘CLOOSE’ where the two letters ‘O’ are slightly overlapping and which is also of normal distinctiveness as it is meaningless.

It is important to note 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.

None of the signs has element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the sequence of letters ‘CLO*SE*’. They differ in the letter ‘O’ versus the double letter ‘OO’ placed in third position of the signs and the ending letter ‘D’ in the earlier sign, with no counterpart in the contested mark.

However, the double letter ‘OO’ has a similar pattern to the letter ‘O’ and, as the letters are overlapping and the sound does not exist as such, it is likely that they will be pronounced as a single or a longer ‘O’ by the relevant public. Moreover, the additional letter ‘D’ at the end of the earlier sign has not a major impact on the visual and aural aspects of the sign.

Therefore, it is considered that the signs are visually and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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).

It has been established in the previous sections of this decision that the contested goods are partly identical or similar to goods on which the opposition is based and partly dissimilar. They are directed at public at large and at business customers with an average degree of attention. The earlier mark has an average degree of distinctiveness for all the relevant goods.

It has also been concluded that the signs are visually and aurally similar to at least an average degree. Furthermore, there is no perceived conceptual difference to offset such similarities. These visual and aural similarities are due to the sequence of letters ‘CLO*SE*’ without additional elements in the signs. The differences are limited to the double letters ‘OO’ in the contested sign versus the single letter ‘O’ in the earlier mark and the ending letter ‘D’ in the earlier mark. Therefore, the signs convey very similar overall impressions and, as a consequence, the relevant public may be led to believe that the contested goods come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian and Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 298 406. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

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

The opponent has also based its opposition on German trade mark registration No 30 459 722 for the word mark ‘CLOSED’. This mark covers also goods in Classes 18 and 25, namely:

Class 18: Leather and imitations of leather, and goods made of these materials including in class 18; Animal skins, hides; Trunks and suitcases; umbrellas, canes and walking sticks.

Class 25: Clothing, footwear, headgear.

For the sake of completeness, none of the opponent’s goods have any point of contact with the remaining contested umbrella handles. In particular, the opponent’s leather and imitations of leather, and goods made of these materials including in class 18 are considered different from the remaining contested items. As explained in section a) of this decision, the contested umbrella handles are parts attached to umbrellas meant to be held by the user. These are considered very different from the umbrella units they may be parts of or the goods made of leather; rather, the contested umbrella handles will target professional customers from the relevant accessory industry and not the general public; therefore, they will be available through specific professional distribution channels for the umbrellas industry. Consequently, these goods are considered dissimilar to all of the opponent’s goods in Classes 18 and 25.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

Frédérique SULPICE

Jorge ZARAGOZA GOMEZ

Anna BAKALARZ

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.