OPPOSITION No B 3 004 556

Adler Modemärkte AG, Industriestr. Ost 1-7, 63808, Haibach, Germany (opponent), represented by Laura Kohm, Adler Modemärkte AG, Industriestr. Ost 1-7, 63808, Haibach, Germany (employee representative)

a g a i n s t

Hengyang Guanli Sujiao Co. Ltd., Economic development zone, Hengshan County, Hunan Province, People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

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

DECISION:

1. Opposition No B 3 004 556 is partially upheld, namely for the following contested goods:

Class 25: Footwear; clothing; tee-shirts; bathing suits; sports jerseys; stockings; socks; boots; esparto shoes or sandals; half-boots; football shoes; sports shoes; headgear for wear; hosiery; ski boots.

2. European Union trade mark application No 17 153 719 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 17 153 719 . The opposition is based on European Union trade mark registration No 11 419 942 . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Footwear; clothing; tee-shirts; bathing suits; sports jerseys; stockings; socks; boots; esparto shoes or sandals; half-boots; tips for footwear; football shoes; sports shoes; soles for footwear; heels; headgear for wear; hosiery; ski boots.

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 25

Footwear; clothing are identically contained in both lists of goods.

The contested tee-shirts; bathing suits; sports jerseys; stockings; socks; hosiery are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested headgear for wear is included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested boots; esparto shoes or sandals; half-boots; football shoes; sports shoes; ski boots are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested tips for footwear; soles for footwear; heels are parts, components or fittings of final products and they target professional consumers and/or manufacturers working in the footwear industry. Therefore, the abovementioned contested goods and the opponent’s goods, which are final products, target different relevant publics. Furthermore, these contested goods and the opponent’s goods have different natures and purposes, they do not have the same manufacturers and are distributed through different retail outlets. Therefore, they are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention is considered average.

3. The signs

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 earlier trade mark is a figurative mark containing the verbal element ‘Eagle’ depicted in slightly stylised black italic letters on a white background surrounded by a thin black rectangular frame.

The element ‘Eagle’ is an English word that means a large bird of prey with a massive hooked bill and long broad wings, renowned for its keen sight and powerful soaring flight (information extracted from Oxford Dictionaries on 15/10/2018 at https://en.oxforddictionaries.com/definition/eagle). However, it is not meaningful in certain territories, for example in those countries where English is not widely understood, such as the Czech-, Hungarian-, Italian-, Lithuanian-, Polish- and Spanish-speaking countries. Be that as it may, since it has no relation to the relevant goods in Class 25, it is of average distinctiveness for both the public that understands its meaning and the public that perceives it as a meaningless word.

The rectangle is a simple geometrical shape and, moreover, in the present case it is used as a frame. Therefore, it is decorative and non-distinctive.

The contested sign is a figurative mark containing the verbal element ‘Eagleris’ depicted in slightly stylised black letters. The verbal element ‘Eagleris’ has no meaning for the relevant public and its distinctiveness is average.

Neither of the marks has any element that is more dominant than others.

Visually, the signs coincide in the sequence of letters ‘Eagle’, which forms the entire earlier trade mark. Furthermore, the stylisation of the signs also looks slightly similar. However, they differ in the three letters, ‘ris’, that appear at the end of the contested sign and have no counterpart in the earlier mark.

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, when reading the contested sign from left to right, consumers will encounter the same letters as in the earlier mark. Moreover, all the letters that form the earlier mark are contained in the contested sign.

Therefore, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛Eagle’, present identically in both signs. The pronunciation differs in the sound of the letters ‛ris’ at the end of the contested sign, which have no counterpart in the earlier mark. Moreover, the coinciding sounds, those of the letters ‘Eagle’, will be pronounced in the same position and order, and therefore their rhythms and intonations are similar.

Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the non-English-speaking part of 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 for that part of the public. For the remaining part of the relevant territory, that is, the English-speaking part of the public, which perceives the meaning of the verbal element ‘Eagle’, the contested sign has no meaning, and therefore the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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).

In the present case, some of the goods are identical and some are dissimilar. They target the public at large, which displays an average degree of attention. The signs are visually and aurally similar to a high degree. The conceptual aspect does not influence the assessment of the similarity between the signs for the part of the relevant public for which neither of the signs has a meaning. For another part of the relevant public, which perceives the meaning of the earlier trade mark, the signs are conceptually not similar.

Both signs are figurative marks that contain only one verbal element. Furthermore, there is a slight similarity in the font in which these verbal elements are depicted. According to settled case-law, in word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30). In the present case, it is not only in their beginnings that the signs have letters in common, but all the letters that form the earlier trade mark are reproduced identically and in the same order in the contested sign. Therefore, it is considered that the difference arising from the three differing letters at the end of the contested sign does not outweigh the similarity between the signs.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. It is a market reality that manufacturers develop several lines of the same brand to market their products targeting different consumers, which might have different styles. Being used to such practices, even when perceiving that the contested sign contains an additional three letters at the end, consumers may think that the owner of the earlier mark in the present case has expanded its product line with the contested mark.

Account also is taken of the fact that some of the goods are identical. Applying the abovementioned principle of interdependence, a lesser degree of similarity between signs is offset by an identity between goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the 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 11 419 942.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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

Carmen SÁNCHEZ PALOMARES

Birute SATAITE-GONZALEZ

Ferenc GAZDA

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.