OPPOSITION No B 3 010 322

Teresa Diez Soler, Jose Gomez Mompean, 72-74, 03206, Elche (Alicante), Spain (opponent), represented by Clara Eugenia Martin Alvarez, Vicente Blasco Ibañez, 43, entlo. drcha., 03201, Elche (Alicante), Spain (professional representative)

a g a i n s t

Paradise Motorcycles, 9 Avenue de la Grande Armée, 75116 Paris, France (applicant).

On 25/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 010 322 is partially upheld, namely for the following contested goods and services:

Class 18: Luggage, bags, wallets and other carriers; shoulder straps; shoulder belts [straps] of leather; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; cases of leather or leatherboard; leather luggage straps; straps made of imitation leather; leather straps; chin straps, of leather; girths of leather; labels of leather; toiletry bags sold empty; trunks [luggage];trunks and suitcases;; bags; sling bags; Gladstone bags; bumbags; pouches; kit bags; waterproof bags; roll bags; clutch bags; beach bags; nappy bags; duffel bags; bags for campers; handbags; shopping bags; bags for sports; work bags; school bags; roller bags; canvas bags; courier bags; garment carriers; travel garment covers; flight bags; bags for climbers; book bags; bags made of leather; baby backpacks; gym bags; travelling bags; cross-body bags; rucksacks; souvenir bags; shoe bags; business cases; grips [bags]; bags made of imitation leather; flexible bags for garments; reusable shopping bags; overnight bags; hiking bags; school knapsacks; small bags for men; belt bags and hip bags; small rucksacks; tool bags, empty; towelling bags; purses, not of precious metal; ladies’ handbags; weekend bags; handbags made of leather; travelling handbags; all-purpose athletic bags; leather bags and wallets; evening handbags; rucksacks on castors; all-purpose carrying bags; daypacks; shopping bags with wheels attached; slouch handbags; bags for sports clothing; sports packs; canvas shopping bags; children’s shoulder bags; knitting bags; fashion handbags; trolley duffels; straps for handbags; handbags made of imitations leather; textile shopping bags; Boston bags; travelling bags made of imitation leather; hipsacks; hiking rucksacks; charm bags (omamori-ire); travel bags made of plastic materials; shoe bags for travel; handbags, purses and wallets; shopping bags made of skin; garment bags for travel; golf bag tags of leather; grocery tote bags; holdalls for sports clothing; general purpose sport trolley bags; randsels [Japanese school satchels]; bags [envelopes, pouches] of leather, for packaging; grips for holding shopping bags; tie cases; carrying cases for documents; key cases; business card cases; key cases made of leather; commutation-ticket holders; tie cases for travel; leather cases; credit-card holders; holders in the nature of cases for keys; key cases of imitation leather; credit card holders made of leather; cases of imitation leather; keycases of leather and skins; credit card holders made of imitation leather; pocket wallets; portfolio cases [briefcases]; card cases [notecases];card wallets [leatherware]; leather wallets; wrist-mounted wallets; wallets including card holders; credit card cases [wallets]; wallets for attachment to belts; wallets, not of precious metal; leather credit card wallets; vanity cases, not fitted.

Class 25: Headgear; footwear; clothing.

Class 35: Retail services in relation to bags; wholesale services in relation to bags; advertising, marketing and promotional services; retail services in relation to headgear; retail; retail store services in the field of clothing; retail services in relation to footwear; retail services in relation to clothing; retail services in relation to luggage; retail services in relation to sporting equipment; retail services in relation to sporting articles; retail services relating to furs; online retail services relating to clothing; retail services relating to sporting goods; mail order retail services for clothing; online retail services relating to luggage; online retail services relating to handbags; retail services in relation to fashion accessories; retail services in relation to clothing accessories; wholesale services in relation to saddlery; wholesale services in relation to luggage; wholesale services in relation to footwear; wholesale services in relation to headgear; wholesale services in relation to clothing; wholesale services in relation to sporting equipment; mail order retail services connected with clothing accessories; online retail store services relating to clothing.

2. European Union trade mark application No 17 177 023 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 177 023 for the figurative mark , namely against all the goods in Class 18 and some of the goods and services in Classes 25 and 35. The opposition is based on the following earlier marks:

• Spanish trade mark registration No 2 510 906 for the word mark ‘CASTELL’;

• Spanish trade mark registration No 2 891 042 for the word mark ‘CASTELL’;

• Spanish trade mark registration No 2 948 361 for the word mark ‘CASTELL’.

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 and services

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

Spanish trade mark registration No 2 510 906 (hereinafter EM 1)

Class 35: Promotion, importation and exportation, sale in detail and through worldwide informatic networks, especially those related to the footwear and leather industry.

Spanish trade mark registration No 2 891 042 (hereinafter EM 2)

Class 35: The services of promotion, dissemination and propaganda, as well as import and export services, especially those related to the footwear and marrow industry.

Class 39: The storage, distribution and transportation services, especially those related to the footwear and marrow industry.

Spanish trade mark registration No 2 948 361 (hereinafter EM 3)

Class 16: Printed, catalogs, labels (not of fabric), prospects, cards, blocks, paper of letters, envelopes (paperwork), calendars, almanaques, carton or paper boxes; bags of plastic materials for packaging.

Class 18: Suitcases, bags and belts.

Class 25: Dresses, including boots, shoes and shoes.

Class 26: Puntillas and embroidered; tapes and ties; buttons, hooks and eyes, needles and pins; artificial flowers.

The contested goods and services are the following:

Class 18: Luggage, bags, wallets and other carriers; walking sticks; umbrellas and parasols; shoulder straps; shoulder belts [straps] of leather; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; cases of leather or leatherboard; leatherboard; kid; leather laces; leather luggage straps; straps made of imitation leather; leather, unworked or semi-worked; imitation leather sold in bulk; polyurethane leather; leather and imitations of leather; leather for shoes; leather for harnesses; leather for furniture; leather sold in bulk; faux fur; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; leather twist; semiworked fur; fur; furs sold in bulk; casings, of leather, for springs; trimmings of leather for furniture; imitation leather; leather straps; chin straps, of leather; moleskin [imitation of leather];chamois leather, other than for cleaning purposes; animal skins; worked or semi-worked hides and other leather; girths of leather; labels of leather; leather cloth; toiletry bags sold empty; valves of leather; trunks [luggage];trunks and suitcases; umbrellas; combination walking sticks and umbrellas; umbrella sticks; umbrella handles; umbrella covers; bags; sling bags; Gladstone bags; bumbags; pouches; kit bags; waterproof bags; roll bags; clutch bags; beach bags; nappy bags; duffel bags; bags for campers; handbags; shopping bags; bags for sports; work bags; school bags; roller bags; canvas bags; courier bags; garment carriers; travel garment covers; flight bags; bags for climbers; purse frames; book bags; bags made of leather; baby backpacks; gym bags; travelling bags; cross-body bags; rucksacks; souvenir bags; shoe bags; business cases; grips [bags]; bags made of imitation leather; flexible bags for garments; reusable shopping bags; overnight bags; hiking bags; school knapsacks; small bags for men; belt bags and hip bags; small rucksacks; tool bags, empty; towelling bags; purses, not of precious metal; ladies’ handbags; weekend bags; handbags made of leather; travelling handbags; all-purpose athletic bags; leather bags and wallets; evening handbags; rucksacks on castors; all-purpose carrying bags; daypacks; shopping bags with wheels attached; slouch handbags; bags for sports clothing; sports packs; canvas shopping bags; children’s shoulder bags; knitting bags; fashion handbags; trolley duffels; handbag frames; straps for handbags; handbags made of imitations leather; textile shopping bags; Boston bags; travelling bags made of imitation leather; hipsacks; hiking rucksacks; charm bags (omamori-ire); travel bags made of plastic materials; shoe bags for travel; handbags, purses and wallets; shopping bags made of skin; garment bags for travel; golf bag tags of leather; grocery tote bags; holdalls for sports clothing; general purpose sport trolley bags; randsels [Japanese school satchels]; bags [envelopes, pouches] of leather, for packaging; grips for holding shopping bags; tie cases; carrying cases for documents; key cases; business card cases; key cases made of leather; commutation-ticket holders; tie cases for travel; leather cases; credit-card holders; holders in the nature of cases for keys; key cases of imitation leather; credit card holders made of leather; cases of imitation leather; keycases of leather and skins; credit card holders made of imitation leather; pocket wallets; portfolio cases [briefcases]; card cases [notecases]; card wallets [leatherware]; leather wallets; wrist-mounted wallets; wallets including card holders; credit card cases [wallets];wallets for attachment to belts; wallets, not of precious metal; leather credit card wallets; vanity cases, not fitted.

Class 25: Headgear; footwear; clothing.

Class 35: Retail services in relation to bags; wholesale services in relation to bags; advertising, marketing and promotional services; retail services in relation to headgear; retail; retail store services in the field of clothing; retail services in relation to footwear; retail services in relation to clothing; retail services in relation to luggage; retail services in relation to sporting equipment; retail services in relation to sporting articles; retail services relating to furs; online retail services relating to clothing; retail services relating to sporting goods; mail order retail services for clothing; online retail services relating to luggage; online retail services relating to handbags; retail services in relation to fashion accessories; retail services in relation to clothing accessories; wholesale services in relation to saddlery; wholesale services in relation to luggage; wholesale services in relation to footwear; wholesale services in relation to headgear; wholesale services in relation to clothing; wholesale services in relation to sporting equipment; mail order retail services connected with clothing accessories; online retail store services relating to clothing.

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

The term ‘including’, used in the applicant’s and the opponent’s lists of goods and services, indicates that the specific goods and services 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 (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107). Nevertheless, considering the wording of the list of goods of EM 3, namely dresses, including boots, shoes and shoes, the elements boots, shoes and shoes should be considered separately, because boots, shoes and shoes are obviously not examples of specific dresses.

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

The contested luggage and other carriers; cases of leather or leatherboard; toiletry bags sold empty; sling bags; Gladstone bags; bumbags; pouches; kit bags; waterproof bags; roll bags; clutch bags; beach bags; nappy bags; duffel bags; bags for campers; handbags (twice in the contested list of goods); shopping bags; bags for sports; work bags; school bags; roller bags; canvas bags; courier bags; garment carriers; travel garment covers; flight bags; bags for climbers; book bags; bags made of leather; baby backpacks; gym bags; travelling bags; cross-body bags; rucksacks; souvenir bags; shoe bags; business cases; grips [bags]; bags made of imitation leather; flexible bags for garments; reusable shopping bags; overnight bags; hiking bags; school knapsacks; small bags for men; belt bags and hip bags; small rucksacks; tool bags, empty; towelling bags; purses, not of precious metal; ladies’ handbags; weekend bags; handbags made of leather; travelling handbags; all-purpose athletic bags; leather bags; evening handbags; rucksacks on castors; all-purpose carrying bags; daypacks; shopping bags with wheels attached; slouch handbags; bags for sports clothing; sports packs; canvas shopping bags; children’s shoulder bags; knitting bags; fashion handbags; trolley duffels; handbags made of imitations leather; textile shopping bags; Boston bags; travelling bags made of imitation leather; hipsacks; hiking rucksacks; charm bags (omamori-ire); travel bags made of plastic materials; shoe bags for travel; purses; shopping bags made of skin; garment bags for travel; grocery tote bags; holdalls for sports clothing; general purpose sport trolley bags; randsels [Japanese school satchels]; bags [envelopes, pouches] of leather, for packaging; carrying cases for documents; leather cases; cases of imitation leather; portfolio cases [briefcases] are included in the broad category of, or at least overlap with, the opponent’s bags (EM 3). Therefore, they are identical.

Bags (listed twice in the list of contested goods); suitcases are identically contained in the applicant’s and the opponent’s (EM 3) lists of goods.

The contested trunks [luggage]; trunks overlap with the opponent’s suitcases (EM 3). Therefore, they are identical.

The contested vanity cases, not fitted are cases typically used to contain and carry cosmetics. Therefore, they have a similar purpose to the opponent’s bags (as bags include make-up bags). They are also in competition with one another. They are sold in the same establishments through the same distribution channels. Therefore, these contested goods and the opponent’s bags (EM 3) are considered similar to a high degree.

The contested shoulder straps; shoulder belts [straps] of leather; leather luggage straps; straps made of imitation leather; leather straps; chin straps, of leather; straps for handbags are similar to the opponent’s bags (EM 3), which are also made of leather and have, therefore, the same nature. They consist of a strip of leather to support or hold these bags, and to that extent are complementary, and are produced by the same companies (02/11/2016, R 561/2016-2, buhoo (fig.) / BOOHOO, § 48; 04/06/2018, R 2351/2017-4, etnee (fig.) / ETNIES et al., § 52).

Following the same reasoning, the contested grips for holding shopping bags are similar to the opponent’s bags (EM 3) for the same reasons, namely that they have the same nature (insofar as bags include shopping bags), are complementary and are produced by the same companies.

The contested boxes made of leather; boxes of leather or leatherboard are similar to the opponent’s bags (EM 3). These goods have the same general purpose, which is to carry things. Furthermore, they target the same public and come from the same producers.

The contested imitation leather hat boxes; tie cases; tie cases for travel are cases designed to hold ties or hats when travelling, to avoid wrinkling the fabric. They are similar to the opponent’s bags (EM 3). The goods have the same nature and purpose, being containers for carrying belongings when travelling. They could also have the same producers, end users and distribution channels.

The contested girths of leather are leather straps that are fastened firmly around the middle of a horse to keep the saddle or load in the right place (Collins English Dictionary). Therefore, they are equipment for horses and for riding them. The opponent’s bags (EM 3) include, as a general category, horse sport bags, which can have the same purpose as the contested goods, namely to be used when horse riding. These goods can have the same producers, distribution channels and relevant public. In addition, the fact that they are both made of leather also results in further points of contact in terms of their nature and processing (24/03/2015, R 574/2014-4, UOMO BOSS / BOSS, § 15; 13/12/2012 R 1635/2012-4, Claude Domier / Domier, § 22). They are, thus, similar (04/06/2018, R 2351/2017-4, etnee (fig.) / ETNIES et al.).

The contested labels of leather; golf bag tags of leather are similar to the opponent’s labels (not of fabric) in Class 16 (EM 3). These goods have similar purposes and methods of use. Furthermore, they are in competition and target the same public.

The contested wallets (listed three times in the list of contested goods); key cases; business card cases; key cases made of leather; commutation-ticket holders; credit-card holders; holders in the nature of cases for keys; key cases of imitation leather; credit card holders made of leather; key-cases of leather and skins; credit card holders made of imitation leather; pocket wallets; card cases [notecases]; card wallets [leatherware]; leather wallets; wrist-mounted wallets; wallets including card holders; credit card cases [wallets]; wallets for attachment to belts; wallets, not of precious metal; leather credit card wallets are similar to a low degree to the opponent’s bags (EM 3) because they have the same producers, distribution channels and target public.

The contested walking sticks; umbrellas and parasols; umbrellas; combination walking sticks and umbrellas; umbrella sticks; umbrella handles; umbrella covers are objects used to protect oneself from the rain or sun, or long wooden sticks that a person can lean on while walking. These goods and the opponent’s goods and services in Classes 16, 18, 25, 26, 35 and 39 are dissimilar. They do not have the same nature, purpose or method of use. Furthermore, they are neither complementary nor in competition. They do not have the same producers and are not sold through the same distribution channels.

The contested leatherboard; kid; leather, unworked or semi-worked; imitation leather sold in bulk; polyurethane leather; leather and imitations of leather; leather for shoes; leather for harnesses; leather for furniture; leather sold in bulk; faux fur; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; leather twist; semi-worked fur; fur; furs sold in bulk; trimmings of leather for furniture; imitation leather; moleskin [imitation of leather]; chamois leather, other than for cleaning purposes; animal skins; worked or semi-worked hides and other leather; leather cloth are raw materials used in the manufacture of bags or other goods. That fact is not sufficient in itself to conclude that these contested goods are similar to the opponent’s goods in Class 18, as their natures, purposes and relevant publics are quite distinct: raw materials are intended for use in industry rather than for direct purchase by the final consumer. In addition, these goods are also dissimilar to the opponent’s goods and services in Classes 16, 25, 26, 35 and 39. They do not have the same nature, purpose or method of use. Furthermore, they are neither complementary nor in competition. They do not have the same producers and are not sold through the same distribution channels.

The contested leather laces; casings, of leather, for springs; valves of leather are finished products. The mere fact that these goods are of leather is insufficient for a finding of similarity with the opponent’s bags. Indeed, the fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61). These goods are also dissimilar to the opponent’s goods and services in Classes 16, 25, 26, 35 and 39. They do not have the same nature, purpose or method of use. Furthermore, they are neither complementary nor in competition. They do not have the same producers and are not sold through the same distribution channels.

The contested purse frames; handbag frames are dissimilar to the opponent’s goods and services. More specifically, a similar reasoning applies to the comparison between these goods and the opponent’s bags, in the sense that the fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts. Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producers, public and/or complementarity, be fulfilled. However, these goods do not have the same nature or purpose, and do not originate from the same producers. They are neither complementary nor in competition. Most of these goods also target different consumers (manufacturers versus end consumers) and are marketed through different trade channels. As already stated, these goods are also dissimilar to the opponent’s contested goods and services in Classes 16, 18, 25, 26, 35 and 39. They do not have the same nature, purpose or method of use. Furthermore, they are neither complementary nor in competition. They do not have the same producers and are not sold through the same distribution channels.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s dresses (EM 3). Since the Office 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 (EM 3). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear and the opponent’s dresses (EM 3) are similar. They serve the same purpose and target the same public. Furthermore, the contested headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement the opponent’s dresses. These goods have the same distribution channels and are often sold in either the same or at least closely connected sales outlets or retail departments. Moreover, many manufacturers and designers will design and produce both dresses and headgear.

Contested services in Class 35

The contested advertising, marketing and promotional services include, as a broader category, or at least overlap with, the opponent’s promotion through worldwide informatic networks, especially those related to the footwear and leather industry. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services (EMs 1 and 2).

Retail services in relation to footwear; wholesale services in relation to footwear are identically contained in the opponent’s lists of services (EMs 1 and 2) and in the list of contested services (including synonyms).

The contested retail services in relation to bags; wholesale services in relation to bags; retail services in relation to headgear; retail store services in the field of clothing; retail services in relation to clothing; retail services in relation to luggage; retail services in relation to sporting equipment; retail services in relation to sporting articles; retail services relating to furs; online retail services relating to clothing; retail services relating to sporting goods; mail order retail services for clothing; online retail services relating to luggage; online retail services relating to handbags; retail services in relation to fashion accessories; retail services in relation to clothing accessories; wholesale services in relation to saddlery; wholesale services in relation to luggage; wholesale services in relation to headgear; wholesale services in relation to clothing; wholesale services in relation to sporting equipment; mail order retail services connected with clothing accessories; online retail store services relating to clothing are at least similar to the opponent’s sale in detail and through worldwide informatic networks, especially those related to the footwear and leather industry (EMs 1 and 2). Retail services relating to specific goods are considered similar to retail services relating to other specific goods whether or not there is similarity between the goods in question. The services under comparison have the same nature, as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. In addition, the goods in question are commonly retailed in the same outlets and may have the same relevant public and distribution channels.

Finally, in the notice of opposition, the list of contested services in Class 35 includes retail. Nevertheless, as these services are not included as such in the contested application, these services will not be compared with the opponent’s goods and services.

Decision on Opposition No B 2 776 170 The contested handbag frames; suitcase handles are parts or components of handbags and suitcases. They are dissimilar to the opponent’s goods in class 18 including bags; trunks and valises. The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producers, public and/or complementarity, be fulfilled. However, these goods do not share the same nature or purpose, and do not originate from the same producer. They are neither complementary, nor in competition. Most of these goods also target different consumers (manufacturers on the one side and end consumers on the other) and are marketed through different trade channels.

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 and services found to be identical or similar to various degrees are mainly directed at the public at large, but some, such as the contested labels, are also directed at professionals.

The degree of attention will vary from average to high, depending on the influence of the goods and services on the consumer’s business and on the price of the goods.

3. The signs

CASTELL
Earlier trade marks	Contested sign

The relevant territory is 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 the word marks ‘CASTELL’. The contested sign is a figurative mark consisting of the words ‘Le CASTEL’ depicted on a black square background. ‘CASTEL’ is in white upper case letters and ‘Le’ is in white title case letters. ‘Le’ is underlined by a white line.

‘CASTELL’ and ‘CASTEL’ are meaningless for the relevant public. However, part of the relevant public is likely to associate the two signs with the Spanish word ‘castillo’, meaning ‘castle’, considering the visual and aural proximity between these words. Both words have an average degree of distinctive character in relation to the goods and services at issue.

As ‘Le’ is a basic French article, and even if French cannot be expected to be widely understood amongst Spanish consumers (13/08/2018, R 2464/2017-4, le Sac 11 (fig.) / LESAC et al. §68), in particular taking into account that the knowledge of foreign languages among the Spanish public cannot be considered particularly extensive (see, by analogy, 25/06/2008, T‑36/07, Zipcar, EU:T:2008:223, § 45, confirmed by 03/06/2009, C‑394/08 P, Zipcar, EU:C:2009:334; 13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 32; 15/10/2014, T‑515/12, The English cut, EU:T:2014:882, § 28), the Opposition Division considers that part of the public will understand this word. The French definite article ‘Le’ is merely a basic grammatical device that is used to introduce the masculine noun that follows it. It is non-distinctive (13/08/2018, R 2187/2017-4, CamCube / LE CUBE (fig.), § 22). For the part of the public for which ‘Le’ is meaningless, this element has an average degree of distinctive character.

The black square in the contested sign, being a simple geometric shape, is non-distinctive (21/09/2018, R 2062/2017-4, Idealogistic Compass Greatest care in getting it there (fig.) / iDÉA (fig.) et al., § 42; 19/12/2017, R 1045/2017-4, BLACK OWL SCHWARZE EULE (fig.) / GUARANA ENERGY DRINK BLACK EXTRA STRONG (fig.), § 18). Furthermore, when a trade mark is composed of word and figurative elements, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

In addition, the white line below the word ‘Le’ is purely decorative and thus non-distinctive.

The black background cannot be considered the dominant element of the contested sign, because it will be perceived merely as a background intended to highlight the verbal elements written in white. The Opposition Division considers that the word ‘CASTEL’ is therefore dominant, as the additional elements (the word ‘Le’ and the line) are scarcely visible.

Visually, the signs coincide in the word ‘CASTEL’. They differ in their additional word elements, namely ‘Le’ in the contested sign and the final letter ‘L’ of the earlier marks. The signs also differ in the presence of the figurative elements in the contested sign.

As explained above, the figurative elements of the contested sign are non-distinctive. In addition, the word ‘Le’ is barely visible because of its size. The distinctive and legible element of the contested sign, ‘CASTEL’, is almost identical to the earlier marks’ only component. Therefore, it has to be considered that the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CASTE’, and differs in the sound of the letters ‘L’ and ‘LL’. The signs also differ because of the additional word ‘Le’ in the contested sign.

Nevertheless, as already explained, the element ‘Le’ is very small and hardly legible, and the Opposition Division considers that at least part of the public will not pronounce it.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the public, the signs are meaningless, and to that extent the conceptual comparison has no influence.

For the remaining part of the public, the signs are conceptually identical, or at least highly similar. The words ‘CASTELL’ and ‘CASTEL’ will be perceived as referring to the same concept (a castle) and the additional elements are non-distinctive and/or illegible. Account should be taken of the fact that non-distinctive elements have no influence on the conceptual comparison (see, in that regard, 04/02/2013, T‑159/11, Walichnowy Marko, EU:T:2013:56, § 45).

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 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 her 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 as a whole 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.

5. 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).

In the present case, the signs are visually similar and aurally similar to a high degree, and conceptually identical or at least highly similar for part of the public (the conceptual comparison has no influence on the assessment for the remaining part of the public).

The goods and services are partly identical, partly similar to various degrees and partly dissimilar.

The earlier marks have an average degree of distinctive character. The marks target both the general and a professional public. The degree of attention will vary from average to high, depending on the goods and services at issue.

The signs are highly similar overall, given that the earlier marks ‘CASTELL’ are almost identical to the sole distinctive and legible element of the contested sign, ‘CASTEL’.

Moreover, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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 Spanish trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade marks. For the goods found to be similar to a low degree, the Opposition Division considers that there is also a likelihood of confusion. Given the principle of interdependence between the relevant factors, the strong similarity between the signs counterbalances the low degree of similarity between the goods.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michaela SIMANDLOVA

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.