OPPOSITION No B 3 046 458

Samsøe & Samsøe Holding A/S, Ryesgade 19 C, 2200 København N, Denmark (opponent), represented by Accura Advokatpartnerselskab, Tuborg Boulevard 1, 2900 Hellerup, Denmark (professional representative)

a g a i n s t

Cole Haan LLC, 150 Ocean Road, Greenland, 03840 New Hampshire, United States of America (applicant), represented by Brinkhof, De Lairessestraat 111-115, 1075 HH Amsterdam, Netherlands (professional representative).

On 28/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 458 is upheld for all the contested goods.

2. European Union trade mark application No 17 364 721 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 364 721 for the word mark ‘Ø’. The opposition is based on international trade mark registration No 1 193 789 designating the European Union and Danish trade mark registration No VR 2013 01658, both for the figurative mark . 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 international trade mark registration No 1 193 789 designating the European Union.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; bags purses, trunks and travelling bags; umbrellas and parasols.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 18: Briefcases, wallets, suitcases, trunks, traveling bags, rucksacks, leather bags, handbags, purses, leather shopping bags, leather key cases, business card holders, credit card holders, shoulder bags, luggage, clutches, all-purpose athletic bags, sports-bags, beach bags, shoulder bags; pocket wallets; umbrellas.

Class 25: Clothing for men, women and children; jeans, pants, bottoms, shirts, T‑shirts, tops, tank tops, skirts, socks, jackets, coats, shorts, blouses, sweaters, vests, dresses, scarves, gloves, shawls, jumpsuits, capes, rainwear, ski-wear, swimwear, undergarments, singlet’s, hosiery; neckties; footwear; boots, shoes, sneakers, pumps, sandals and slippers; headwear, caps, hats.

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 trunks, traveling bags; umbrellas are identically contained in the opponent’s list of goods.

The contested leather bags, all-purpose athletic bags, sports-bags overlap with the opponent’s travelling bags. Therefore, they are identical.

The contested handbags and shoulder bags (listed twice) overlap with the opponent’s bags purses. Therefore, they are identical.

The contested purses, clutches are included in the broad category of the opponent’s bags purses. Therefore, they are identical.

The contested luggage includes, as a broader category, the opponent’s travelling bags. 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 briefcases, suitcases, rucksacks are at least similar to the opponent’s travelling bags as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested wallets, leather shopping bags, leather key cases, business card holders, credit card holders, beach bags; pocket wallets are similar to the opponent’s bags purses as they usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 25

The contested clothing for men, women and children; jeans, pants, bottoms, shirts, T‑shirts, tops, tank tops, skirts, socks, jackets, coats, shorts, blouses, sweaters, vests, dresses, scarves, gloves, shawls, jumpsuits, capes, rainwear, ski-wear, swimwear, undergarments, singlet’s, hosiery; neckties are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear; boots, shoes, sneakers, pumps, sandals and slippers are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested headwear, caps, hats are identically contained or included in the broad category of the opponent’s headgear. Therefore, they are identical.

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 at least similar are directed at the public at large. The degree of attention is considered average.

c) The signs

	Ø
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 mark is a figurative mark composed of a circle crossed by a vertical straight line that extends above and below the circle.

This mark will be perceived, at least by part of the public, as a letter, namely the Greek letter ‘phi’ by the Greek-speaking part of the relevant public and by the part of the public for which the Greek alphabet is familiar or the letter ‘ef’ by the Bulgarian-speaking part of the relevant public. For the remaining part of the public, this figurative element will be associated with the depiction of geometric shapes. As the sign does not have any meaning in relation to the relevant goods, the mark is distinctive.

In its observations, the applicant argues that the earlier mark will be also perceived as the ampersand symbol since it is used by the opponent between the names that compose their trade name. However, it should be pointed out that the analysis of the meaning that the public perceives in an element must be carried out in respect of the element as it is registered or applied for registration and not in relation to any particular use in the market by the parties. Therefore, this argument must be set aside.

The contested sign is composed of a circular shape crossed by a straight line rotated a few degrees clockwise from vertical that extends above and below the circle.

This sign will be understood as the Danish letter ‘ø’ and the word ‘island’ by the Danish-speaking part of the relevant public. Moreover, as the applicant argues, it represents the mathematical symbol for zero or empty set. However, in the Opposition Division’s opinion this meaning will be only grasped by a specialised part of the public that is familiar with this symbol. For the remaining part of the public, this element will be associated with the geometric shapes that it depicts. As the element does not have any meaning in relation to the relevant goods, the sign is distinctive.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Bearing in mind the foregoing, the signs in question are not meaningful in certain territories, namely in those countries where Bulgarian, Danish or Greek is not understood, and for the non-specialised part of the relevant public who does not recognise the mathematic symbol for an empty set. For this part of the public, the marks convey the meaning of the depiction of the geometric shapes they contain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will only perceive the signs at issue as containing geometric shapes, as this is the scenario in which the signs show more similarities and therefore where a likelihood of confusion would be most likely to arise.

Visually, the signs coincide in the circular shapes and the straight line that crosses them. However, they differ in the angle of inclination of the straight line, which is vertical in the earlier mark and which is rotated few degrees clockwise from vertical in the contested sign. Although the line in the earlier mark extends a bit further beyond the circle than in the contested sign and the circle looks a little more oval in the contested sign, these aspects are not immediately striking and can only be perceived on a detailed comparison of the two signs together. However, the relevant public will perceive both signs as a whole, without further dissecting and analysing their graphical particularities. Indeed, on encountering the signs on the market, consumers will rarely have them side by side so as to be able to identify their possible differences.

Therefore, the signs are visually highly similar.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as circles crossed by a straight line, the signs are conceptually similar to a very high degree.

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 acquired a high degree of distinctiveness through a substantial use. 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.

In its observations, the applicant pointed out that the earlier mark has a limited scope of protection since it consists of basic geometrical forms. However, in the Opposition Division’s opinion, the mark is not composed of only a basic geometric shape or a mere repetition of this shape, but it is a combination of two different geometric shapes that form a figurative element distinguishable as a trade mark by the relevant public. Therefore, this argument must be set aside.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue are partly identical and partly similar and at least similar and target the public at large, whose degree of attention will be average when purchasing them.

The distinctiveness of the earlier mark is considered normal.

The marks are visually similar to a high degree and conceptually similar to a very high degree, while it is not possible to compare them aurally.

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).

Moreover, generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual similarities between the signs are particularly relevant when assessing the likelihood of confusion between them.

Taking into account all the circumstances, the differences, which mainly reside in the angle of inclination of the straight line in both signs, are not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish the marks in dispute for the goods at issue and will perceive them as having the same origin.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. The previous cases are 17/05/2013, T‑502/11, Stripes, EU:T:2013:263; 13/06/2018, R 2195/2017‑2, DEVICE OF TWO OVERLAPPED SQUARES (fig.) / DEVICE OF TWO OVERLAPPED SQUARES (fig.) et al.; 19/06/2017, R 2056/2016‑2, DEVICE OF CLOSED RING (fig.) / G (fig.); 03/06/2016, R 1453/2015‑2, DEVICE OF TWO OVERLAPPED ELLIPSES (fig.) / DEVICE OF TWO SEPARATED ELLIPSES (fig.); and 13/01/2016, R 341/2015‑2, Device of a heart (fig.). In these cases, there are more than one differing element in the conflicting signs, which make them differentiable by the public, while the signs in the present proceedings consist of the same elements, principally with a variation in the rotation of one element.

Considering all the above, there is a likelihood of confusion on the part of the public that will only perceive the signs at issue as containing geometric shapes. 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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 193 789 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier international trade mark registration No 1 193 789 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Marta GARCÍA COLLADO

Victoria DAFAUCE MENENDEZ

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.