OPPOSITION No B 3 076 834

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

a g a i n s t

Andrzej Bargiel Sport Promotion, Łętownia 397, 34-242 Łętownia, Poland (applicant), represented by Leśnodorski, Ślusarek i Wspólnicy sp.k., Szara 10, 00-420 Warszawa, Poland (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 834 is partially upheld, namely for the following contested goods and services:

Class 14: Ornaments [jewellery, jewelry (Am.)]; Jewellery; Clocks and watches.

Class 18: Leather and imitation leather; Animal skins, hides; Luggage and carrying bags; Umbrellas and parasols; collars, leashes and clothing for animals.

Class 20: Garment covers (for storage).

Class 24: Towels of textile; bags for sleeping bags.

Class 25: Sports clothing and garments; Hats; Footwear.

Class 28: Sporting equipment and accessories therefor.

Class 35: Sale of clothing, footwear, jewellery, bags and rucksacks; sale of goods bearing logos in the form of an advertising or decorative element, namely clothing, footwear, jewellery, bags and rucksacks.

2. European Union trade mark application No 17 193 004 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 17 193 004 , namely against some of the goods and services in Classes 9, 14, 16, 18, 20, 24, 25, 28 and 35. The opposition is based on, inter alia, German trade mark registration No 302 017 009 262 ‘LEONE’ (word mark), German trade mark registration No 302 012 030 994 ‘LEONE’ (word mark), Benelux trade mark registration No 910 475 ‘LEONE’ (word mark) and Benelux trade mark registration No 1 022 346 ‘LEONE’ (word mark). The opponent invoked Article 8(1)(a) and (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 German trade mark registration No 302 017 009 262.

1. The goods and services

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

Class 14: Leather jewellery

Class 18: Briefcases, document cases, beach bags, pocket wallets, bags for campers, shopping bags, casings of leather for springs, coverings of skins (furs), purses (coin purses), purses not of precious metal, suitcase handles, handbags, hip bags, dog collars, card cases (notecases), sling bags for carrying infants, garment bags for travel, trunks in particular travelling trunks, trunks (luggage), attaché cases, valises, suitcases, vanity cases, not fitted; imitation leather, leather leashes, leatherware, namely travelling sets, key cases, umbrellas, toilet bags, travelling bags, rucksacks, bags for climbers, shoe bags, satchels, school bags, bags with wheels, haversacks.

Class 24: Handkerchiefs of textile.

Class 25: Heels, heelpieces for boots and shoes, suits, bath sandals, bath slippers, berets, motorists’ clothing, clothing, frocks, inner soles, pocket squares, mittens, football shoes, belts (clothing), gymnastic shoes, half-boots, cravats, gloves (clothing), slippers, short-sleeved shirts, shirts, slips (undergarments), wooden shoes, trousers, suspenders, hats, jackets (clothing), jerseys (clothing), stuff jackets (clothing), skull caps, hoods (clothing), pockets for clothing, ready-made clothing, headgear for wear, headscarves, neckties, ascots, clothing of leather, coats, pelisses, dressing gowns, muffs (clothing), caps (headwear), outer clothing, ear muffs (clothing), combinations (clothing), parkas, pelerines, furs (clothing), petticoats, pullovers, waterproof clothing, skirts, sandals, saris, scarves, sashes for wear, lace boots, fittings of metal for shoes and boots, shoes, footwear, dress shields, ski boots, underpants, socks, boots for sports, sports shoes, boots, headbands (clothing), esparto shoes or sandals, fur stoles, studs for football boots (shoes), beach clothes, beach shoes, stockings, stockings (sweat-absorbent), tights, sweaters, togas, knitwear (clothing), singlets, tee-shirts, neckerchiefs in particular breast-pocket handkerchiefs; overcoats, pants, underwear, waistcoats, hosiery; women’s shoes, women’s footware.

Class 34: Pipe bags.

Class 35: Retail services with respect to the goods specified in classes 14, 18, 24, 25 and 34, arrangement and exhibition of the goods specified in classes 14, 18, 24, 25 and 34 for presentation and selling purposes, online retail and mail order trading services with respect to the goods specified in classes 14, 18, 24, 25 and 34.

The contested goods and services are the following:

Class 9: Glasses and sun glasses.

Class 14: Ornaments [jewellery, jewelry (Am.)]; Jewellery; Clocks and watches.

Class 16: Bags, handbags and packaging of paper or film

Class 18: Leather and imitation leather; Animal skins, hides; Luggage and carrying bags; Umbrellas and parasols; collars, leashes and clothing for animals.

Class 20: Garment covers (for storage).

Class 24: Towels of textile; bags for sleeping bags.

Class 25: Sports clothing and garments; Hats; Footwear.

Class 28: Gymnastic and sporting articles; Sporting equipment and accessories therefor; Skates.

Class 35: Sale of clothing, footwear, sporting and mountaineering equipment, jewellery, watches, bags and rucksacks; Sale of goods bearing logos in the form of an advertising or decorative element, namely clothing, footwear, sporting and mountaineering equipment, jewellery, watches, bags and rucksacks.

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

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to the. 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 both the opponent’s and applicant’s lists of goods ad services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the good and services specifically listed.

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 9

The contested glasses and sun glasses are, contrary to the opponents argument, dissimilar to the earlier goods in Class 25 (or any of the other opponent’s goods and services in Classes 14, 18, 24, 34 and 35). These goods have nothing in common as their nature, purpose, distribution channels and method of use do not coincide. Neither are they complementary or in competition. This approach was, concerning Class 25, confirmed in 24/03/2010, T-363/08, Nollie, EU:T:2010:114, § 35-36 and the caselaw cited therein.

Contested goods in Class 14

The contested ornaments [jewellery, jewelry (Am.)]; jewellery includes, or overlaps with, the opponents leather jewellery. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested clocks and watches are at least similar to the opponent’s leather jewellery. They can share the same purpose (decorative, even if in the case of time instruments they have the additional purpose of measuring time), can be manufactured by the same undertakings and they coincide in targeted public and sales outlets (jewellery stores).

Contested goods in Class 16

The opponent’s bags in Class 18 are various types of bags and fashion items aimed at carrying things. While the applicant’s bags, handbags and packages of paper or film in Class 16 might be seen to cater to similar needs, these goods are for a type of packaging whose primary purpose is different from the opponent’s various bags. They have different producers, distribution channels and end users. They are not in competition or complementary to each other. This applies even more to the opponent’s remaining goods in Classes 14, 24, 25, 34 and 35. Therefore, they are dissimilar.

Contested goods in Class 18

Umbrellas; imitation leather are identically contained in both lists of goods.

The contested luggage and carrying bags overlaps with the opponent’s trunks (luggage). Therefore, they are identical.

The contested collars include the opponent’s dog collars. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested leashes include the opponent’s leather leashes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested parasols are similar to the opponents umbrellas. The have the same nature and purpose, producers, distribution channels and relevant public.

The contested leather; animal skins, hides are similar to the opponent’s imitation leather.

The contested clothing for animals coincide with the opponent’s dog collars at least in producer, relevant public and distribution channels. Moreover, they are to some extent complementary. Therefore, they are similar.

Contested goods in Class 20

The contested garment covers (for storage) refer to covers used to store away clothes inside one’s house, in wardrobes. They are similar to the opponent’s garment bags for travel, in Class 18. These goods have the same purpose, namely to protect clothing. They are addressed at the same consumers and might be sold over the same distribution channels.

Contested goods in Class 24

The contested towels of textile are similar to the opponent’s dressing gowns in Class 25, since the latter can be worn before taking a shower to cover the body or after taking a shower to dry off the water. Therefore, these goods can have the same purpose, producers, distribution channels and relevant public.

The contested bags for sleeping bags are similar to the opponent’s bags for campers. They can have the same producers, distribution channels and relevant public.

Contested goods in Class 25

Hats; footwear are identically contained in both lists of goods.

The contested sports clothing and garments, which are items of apparel designed specifically to be worn when doing sport, are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Contested goods in Class 28

The contested sporting equipment and accessories therefor include, for example, the opponent’s football shoes and the studs for football boots (shoes). Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested gymnastic and sporting articles are articles and apparatus for all types of sports and gymnastics, such as weights, halters, tennis rackets, balls and fitness apparatus. These goods, and also the contested skates, are similar to a low degree to the opponent’s clothing or footwear in Class 25, as the latter broader categories may include sports and gymnastic clothing and sports footwear including skates. Consequently, these goods can coincide at least in their producer, relevant public and distribution channels. Additionally, they can also be complementary.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Finally, a low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers.

In light of the foregoing, the contested sale of clothing, footwear, jewellery, bags and rucksacks; sale of goods bearing logos in the form of an advertising or decorative element, namely clothing, footwear, jewellery, bags and rucksacks are similar to an average degree to the opponent’s clothing; footwear; leather jewellery; handbags; rucksacks respectively, for the reasons described above.

The contested sale of sporting and mountaineering equipment, watches, sale of goods bearing logos in the form of an advertising or decorative element, namely sporting and mountaineering equipment, watches are deemed similar to a low degree to the opponent’s clothing and leather jewellery respectively. Clothing includes sports clothing and these goods and the applicant’s sporting and mountaineering equipment are commonly offered for sale in the same specialised shops or in the same sections of department stores, belong to the same market sector and, therefore, are of interest to the same consumer. The same reasoning is valid for the contested sale of watches, with or without logo, and the opponent’s leather jewellery.

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 directed at the public at large and, concerning for example some of the goods in Class 18, at business customers with specific professional knowledge or expertise.

The degree of attention is average.

3. The signs

LEONE
Earlier trade mark	Contested sign

The relevant territory is Germany.

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

The earlier mark is a word mark, ‘LEONE’. It has no meaning for a significant part of the German public. Therefore, it is distinctive.

The contested sign is a figurative sign, consisting of a circular device in white and black with a depiction of a lion head in the centre. Inside the frame and on top of the mark is the verbal element ‘SUNT LEONES’ in standard white upper case letters, and on bottom of the circular frame the verbal element ‘ANDRZEJ BARGIEL’, also in standard white letters. At the bottom of the lion head are two small letters on top of each other, ‘AB’. This latter element is, due to its size and position barely perceptible in the mark. As it is likely to be disregarded by the relevant public, it is a negligible element that will not be taken into consideration in the assessment of the marks.

The element of the lion head will be understood as such by the relevant public. It has no meaning in relation to the goods and services concerned, and therefore, it is distinctive.

The verbal element ‘SUNT’ has no meaning for the relevant public, and is therefore distinctive. The verbal element ‘LEONES’ will, in connection with the depiction of the lions head below, be perceived as referring to lions for a significant part of the German public. This is also because of its similarity to the English word ‘lions’, the Italian word ‘leones’ and/or the French word ‘leon’. For the public that does not perceive this meaning, it is also distinctive, as it has no meaning in relation to the relevant goods and services.

The verbal element ‘ANDRZEJ BARGIEL’ will be understood as a first name and a surname by the relevant public. As it is not descriptive or otherwise weak in relation to the relevant goods, the inherent distinctive character is normal.

The figurative element of the circular frame in black and white is a less distinctive figurative element of a purely decorative nature.

The contested sign has no element that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, 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).

Consumers generally tend to focus on the beginning/top of a sign when they encounter a trade mark. This is because the public reads from left to right or from top to bottom, which makes the part placed at the left/on top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive verbal element ‘LEONE’. This earlier mark is fully included in the contested sign and placed on top of the contested sign, where it is likely to first catch the attention of the reader, as described above. However, they differ in the additional elements of the contested sign, the plural-S of this verbal element, the first verbal element ‘SUNT’, the verbal element ‘ANDRZEJ BARGIEL’ at the bottom of the mark and in the figurative elements of the sign, all distinctive except for the frame itself, which is less distinctive, as described above.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LEONE’, present identically in both signs and distinctive. The pronunciation differs in the sound of the plural-S of this word in the contested sign, in the sound of the initial word ‘SUNT’ of the contested sign and in the sound of the letters ‘ANDRZEJ BARGIEL’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to a degree below average.

Conceptually, the significant part of the public in the relevant territory will perceive the meanings of some elements in the contested sign as explained above, whereas the earlier sign has no meaning for the relevant public. Since one of the signs will not be associated with any meaning, 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.

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).

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.

In the present case, the goods and services are partly identical, partly similar to various degrees and partly dissimilar. The earlier mark enjoys a normal degree of distinctiveness and the degree of attention is average. The signs are visually similar to an average degree and aurally similar to a degree below average. Conceptually, the signs are not similar.

The signs coincide in the verbal element ‘LEONE’, which is fully distinctive in both signs. The earlier mark is fully included on top of the contested sign, where the consumers tend to focus their attention, as described above.

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).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In view of the above the Opposition Division finds that the additional differing elements in the contested sign are not sufficient to counteract the visual and aural similarities between the marks.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘LEONE’. In support of its argument the applicant refers to several trade mark registrations in the European union and submits an extract from TMview.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘LEONE’. Under these circumstances, the applicant’s claims must be set aside.

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 German trade mark registration.

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 those of the earlier trade mark.

The opposition is not successful insofar as the goods and services that are similar to a low degree are concerned. The moderate similarity of the signs does not outweigh the low degree of similarity between these goods.

The rest of the contested goods and services 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 the following earlier trade marks:

• German trade mark registration No 302 012 030 994 ‘LEONE’ (word mark)

• Benelux trade mark registration No 910 475 ‘LEONE’ (word mark), and

• Benelux trade mark registration No 1 022 346 ‘LEONE’ (word mark).

Since these marks are identical to the one which has been compared and cover the same or a narrower scope of goods and services or cover goods and services that are clearly different to those applied for in the contested trade mark, 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs are obviously not identical.

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

Christian STEUDTNER

Lena FRANKENBERG GLANTZ

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.