OPPOSITION Nо B 3 051 444

 

El Corte Inglés, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Sabre Retail Fashion Limited, St John's Place, Easton Street, HP11 1NL, High Wycombe, United Kingdom (applicant), represented by Naazneen Schmittzehe, The Presbytere, 32500 Lamothe Goas, Gers, France (professional representative).

On 07/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 051 444 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 04/05/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 439 712 (figurative mark). The opposition is based on EUTM registration No 9 737 925 for the word mark ‘amitié’ and Spanish trade mark registration No 2 023 763 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.

a) The goods and services

 

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

 

Spanish trade mark registration No 2 023 763

Class 35: Advertising; business management related to franchises; business administration; office functions.

EUTM registration No 9 737 925

Class 18: Leather and imitation leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

The contested services are the following:

 

Class 35: The bringing together, for the benefit of others of a variety of: holdalls, satchels, bags, changing bags, sports bags, beach bags, shoulder bags, toilet bags, carrier bags, rucksacks, backpacks, bum bags, casual bags, briefcases, music cases, beauty cases, carriers for suits, for shirts and for dresses, document cases, wallets, purses, shooting sticks, headgear, headwear, parts and fittings for trunks and travelling bags, travel cases, luggage, suitcases, holdalls, satchels, wheelie cases, bags, changing bags, sports bags, beach bags, shoulder bags, toilet bags, carrier bags, rucksacks, backpacks, bum bags, casual bags, briefcases, music cases, beauty cases, carriers for suits, for shirts and for dresses, document cases, wallets, purses, umbrellas, parasols, walking sticks, shooting sticks; enabling customers to conveniently view and purchase those goods from a general merchandise retail store, or from a general merchandise Internet Website, or from a general merchandise catalogue by mail order, or by means of telecommunications; advertising services; promotional services; information advisory services all relating to the aforesaid services.

The opposition was initially filed against the goods and services in Classes 18, 25 and a broader list of services in Class 35. However, on 07/11/2019, the list of goods and services was limited (Classes 18 and 25 and part of the services in Class 35 were deleted) due to a partially successful opposition No 3 052 392 against the contested sign.

On 21/10/2019, the opponent was asked to inform the Office within a specified time period whether it maintains the opposition in view of the partial rejection of the contested sign. The opponent was informed that the proceedings will continue in case it does not reply. The opponent did not reply to this communication and the parties were informed that the proceedings will continue.

Some of the contested services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

 

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 services assumed to be identical partly target the public at large (e.g. the bringing together, for the benefit of others of a variety of: holdalls, satchels, bags, changing bags, sports bags, beach bags), and partly business customers with specific professional knowledge or expertise (e.g. advertising). The degree of attention will vary from average to high, depending on the nature of the services, their price and their impact on the customers’ businesses.

c) The signs

 

(Spanish trade mark) Amitié (European Union trade mark)
Earlier trade marks	Contested sign

 

The relevant territory is European Union and Spain, respectively.

 

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 contested sign consists of the verbal element ‘Mintie’ reproduced in slightly stylized letters in black with a star element above the second letter ‘i’. 

One of the earlier marks is also a figurative mark composed of the word ‘amitié’ written in a rather standard typeface. The second earlier mark is a word mark, consisting of the same word ‘amitié’.

Neither of the signs has element that could be considered clearly more dominant than other elements.

The word ‘amitié’ of the earlier marks may have a meaning in some languages of the relevant territory; as indicated by the opponent, the word ‘amitié’ of the earlier marks has a meaning in French (‘friendship'). However, it is not meaningful for the majority of the public in the relevant territory. In both cases, since the element ‘amitié’ will be perceived as a fanciful word without any relation to the characteristics of the relevant goods and services, its degree of distinctiveness is average.

On the other hand, the verbal element ‘Mintie’ of the contested sign may also have a meaning in some languages; for instance, it may be perceived by the Lithuanian-speaking part of the public as meaning ‘a thought’ (vocative case). However, this term is not meaningful for the majority of the public in the relevant territory. In both cases, ‘Mintie’ is distinctive for the relevant services, since it will not be perceived as having any meaning in relation thereto.

For the part of the public that perceives a meaning either in the word 'amitié' or in the word 'Mintie' as explained above, the signs will be associated with a concept that is not present in the other sign and which will thus help those consumers to more easily distinguish between the signs. For this part of the public the marks would be conceptually not similar. Importantly, there are no territories or linguistic areas in which both marks would be associated with similar meanings. Therefore, the Opposition Division will examine the opposition in relation to the part of the public in the relevant territory for which the elements 'Mintie' and 'amitié' will be perceived as fanciful words without any meaning, such as the Italian-, Polish- or Spanish-speaking parts of the public, since this is the most advantageous scenario for the opponent.

Visually, the signs coincide in the sequence ‘TIE’, which makes up the ending of all three signs, and in the fact that their verbal elements are of the same length. The signs differ in the sequence of letters at their beginnings, that is, ‘MIN’ in the contested sign and ‘AMI’ in the earlier marks, and in the additional elements of the signs, namely the typeface and the figurative star element in the contested sign, which have no counterparts in the earlier marks as well as in the typeface and acute accent above the letter ‘E’ in the earlier marks, which have no counterparts in the contested sign.

The fact that marks have the same number of letters is not, as such, of any particular significance for the public targeted by those marks, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them. What matters in the assessment of the visual similarity of two word marks is, rather, the presence, in each of them, of several letters in the same order (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-83).

Contrary to the opponent’s claims, the signs differ in their beginnings, namely ‘AMI***’ versus ‘’MIN***’. The fact that they both contain the sequence ‘MI’ cannot be regarded as a relevant coincidence, as these letters occupy different positions in the signs. In this respect, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive its single elements. In the present case, the signs are not particularly long, so the difference in the sequence of three letters at the beginning of the signs will not go unnoticed by the relevant consumers.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the signs coincide in the sound of their final letters, ‘TIE’, however, they differ in the sound of their first three letters, ‘MIN’ versus ‘AMI’. The signs also differ in the acute accent above the letter ‘E’ in the earlier marks, which has an impact on the pronunciation of this letter for a part of the relevant public; for another part of the public not familiar with accents, this element has no significant aural impact or no impact at all.

Considering all the above, the signs are aurally similar at most to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs to the part of the public under analysis. A star element above the second letter ‘i’ in the word ‘Mintie’ of the contested sign is likely to be perceived as a stylized dot. Since neither of the signs has any meaning, the conceptual aspect is irrelevant for the purposes of assessing the similarity between the signs because it is not possible for the signs to be compared conceptually.

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 marks

 

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 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.

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested services were assumed to be identical to the goods and services for which the earlier marks are registered. They partly target the public at large (e.g. the bringing together, for the benefit of others of a variety of: holdalls, satchels, bags, changing bags, sports bags, beach bags), and partly business customers with specific professional knowledge or expertise (e.g. advertising). The degree of attention will vary from average to high, depending on the nature of the services, their price and their impact on the customers’ businesses. Furthermore, the earlier marks are considered to enjoy a normal degree of distinctiveness.

The signs have a certain degree of visual and aural similarity, insofar as they have coinciding endings, namely the letters ‘TIE’ and their sounds. In addition, they are of the same length.

However, the signs contain obvious differences that offset the similarities between them. From a visual and aural perspective, the signs have different beginnings, namely the sequence ‘AMI’ in the earlier marks versus the sequence ‘MIN’ in the contested sign. These differences occur at the beginnings of the signs, which is where consumers’ attention is primarily focused. Furthermore, the signs are not particularly long, so the difference in the sequence of three letters at the beginnings of the signs will be readily noticed by consumers when they encounter the marks. Finally, there is an acute accent above the coinciding letter ‘E’ in the earlier marks and a figurative element in the contested sign, which alone may not be sufficient to safely differentiate the marks; however, in the present case, these elements contribute to the different overall impressions of the signs.

The Opposition Division considers that the differences between the signs outweigh the similarities between them, even assuming that the goods and services are identical and irrespective of whether the degree of attention of the public is high or average.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

 

This absence of a likelihood of confusion equally applies to the part of the public for which the elements ‘Mintie’ and ‘amitié’ convey (any) concept(s). In such case, the signs would be perceived as conceptually not similar and thus even more easily distinguished by those consumers.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Jakub MROZOWSKI

Sandra KASPERIUNAITE

Gueorgui IVANOV

 

 

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.