OPPOSITION No B 3 023 564

Emeric, Société anonyme, 46, Boulevard Henri IV, 75004, Paris, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative)

a g a i n s t

Karma Technologies S.L., Maximo Aguirre, 6 - 3º D, 48011 Bilbao, Spain (applicant), represented by Eurosigno Patentes y Marcas, Txakursolo n° 23 bajo, 48992 Getxo (Vizcaya), Spain (professional representative).

On 18/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 023 564 is upheld for all the contested goods, namely:

Class 25: Wetsuits for surfing; Swimming costumes; Tee-shirts; Sweat shirts; Visors; Caps [headwear]; Gym suits.

2. European Union trade mark application No 17 257 015 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 257 015, EMERID, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 2 623 676, EMERIC. The opponent invoked Article 8(1) (b), EUTMR.

PROOF OF USE

The applicant did not submit the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use was deemed inadmissible pursuant to Article 10(1) EUTMDR.

A subsequent request for an extension in this regard was refused and justified by the Office by letter dated 13/09/2018. Therefore, the opponent was not required to prove the use of its earlier right in these proceedings.

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

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

a) The goods

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

Class 25: Clothing, including boots, shoes and slippers.

The contested goods are, after a limitation, the following:

Class  25: Wetsuits for surfing; Swimming costumes; Tee-shirts; Sweat shirts; Visors; Caps [headwear]; Gym suits.

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

The contested wetsuits for surfing; swimming costumes; tee-shirts; sweat shirts; gym suits are included in or overlap with the broad category of the opponent´s clothing. Therefore, they are identical despite the applicant´s arguments in respect of the properties of the sportswear in this regard. The modern market features smart clothing and sportswear, however their essence is the same i.e to clothe and protect (which is why they are correctly classified in class 25). They are simply items of apparel which are designed specifically to be worn when doing sport.

The applicant´s arguments that they should be considered with the goods in class 9 fall to be disregarded as the goods in class 9 are not the subject of the present opposition. In addition, the applicant has referred, in its observations, to evidence of how the goods are used. This evidence is not relevant to a comparison of the goods as this assessment regards goods as specified and not as used in the market.

The contested visors; caps [headwear] are similar to the opponent´s clothing as they have the same purpose and they usually coincide in producer, relevant public and distribution channels.

b) Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar are mainly directed at the public at large, including sports enthusiasts.

The degree of attention is considered to be average.

c) The signs

EMERIC	EMERID
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.

The applicant has claimed that the earlier word mark ‘EMERID’ has a meaning in English i.e that it is made up of two abbreviations, emer(gency) and ID, whereas a part of the public may associate the contested word mark EMERIC with a name or (more specifically) the name of a saint (Romania or Hungary for example). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on a part of the public for which the signs are both meaningless, such as the Italian-speaking part of the public where the likelihood of confusion may be higher.

Both marks are word marks with no meaning in respect of the goods or otherwise for the relevant public. They are, therefore, distinctive.

Being word marks, there are no dominant elements.

Visually and aurally, the signs coincide in ‘EMERI’ i.e five out of their respective six letters positioned at the fore. They differ only in their final letter/sound ‘C/D’ respectively.

Therefore, the signs are almost identical.

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.

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.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

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), and that 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).

The goods are either identical or similar and the signs are almost identical from a visual perspective, which carries particular weight in respect of clothing. The signs are also almost identical from an aural perspective and the earlier mark has a normal level of distinctiveness. Consequently, a clear likelihood of confusion exists on the part of the Italian-speaking public displaying an average level of attention.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 623 676, EMERIC. 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 that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Riccardo RAPONI

Keeva DOHERTY

Aldo BLASI

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.