OPPOSITION No B 3 052 392

Comercial Macys Canarias, S.L., Punta Arena Nave B6, 35100, San Bartolome Tirajana, Spain (opponent), represented by Rafael Ortega Pérez, Diego A. Montaude, 7, 1º Of 11, 35001, Las Palmas de Gran Canaria, 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 S&P Legal, 29 Austen Road, GU1 3NP, Guildford, United Kingdom (professional representative).

On 11/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 392 is partially upheld, namely for the following contested goods and services:

Class 18: 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; parts and fittings for all the aforesaid goods.

Class 25: Clothing, footwear, headgear; children's wear; baby wear; apparel; children's apparel; baby apparel; outerwear; beachwear; bibs; gloves; headwear; scarves; socks; hosiery; shoes; boots; wellington boots; belts (clothing); leather belts.

Class 35: The bringing together, for the benefit of others of a variety of: travelling bags, travel cases, trunks, luggage, wheelie cases, suitcases, walking sticks, umbrellas, parasols, clothing, footwear, children's wear, baby wear, apparel, children's apparel, baby apparel, outerwear, beachwear, bibs, gloves, scarves, socks, hosiery, shoes, boots, wellington boots, belts (clothing), leather belts; 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.

2. European Union trade mark application No 17 439 712 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 439 712 . The opposition is based on Spanish trade mark registration No 2 996 858  . 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.

1. The goods and services

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

Class 18: Leather and imitation leather, products of these subjects not included in other classes; animal skins; trunk and suitcases; umbrella, sun umbrella and canes; fugars and articles of guarnicioning.

Class 25: Clothing garments, shoes, shoes articles.

The contested goods and services are the following:

Class 18: 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; parts and fittings for all the aforesaid goods.

Class 25: Clothing, footwear, headgear; children's wear; baby wear; apparel; children's apparel; baby apparel; outerwear; beachwear; bibs; gloves; headwear; scarves; socks; hosiery; shoes; boots; wellington boots; belts (clothing); leather belts.

Class 35: The bringing together, for the benefit of others of a variety of: 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, parts and fittings for all the aforesaid goods, clothing, footwear, headgear, children's wear, baby wear, apparel, children's apparel, baby apparel, outerwear, beachwear, bibs, gloves, headwear, scarves, socks, hosiery, shoes, boots, wellington boots, belts (clothing), leather belts; 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 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

Trunks; suitcases; parasols; umbrellas are identically contained in both lists of goods (including synonyms).

The contested luggage includes, as broader category the earlier suitcases. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested travelling bags; travel cases include, as broader categories the earlier suitcases. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested wheelie cases are included in the in the broad category of the opponent’s suitcases. Therefore, they are identical.

The contested walking sticks include, as broader category the earlier canes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested holdalls; satchels; bags; changing bags; sports bags; beach bags; shoulder bags; carrier bags; rucksacks; backpacks; bum bags; casual bags; briefcases; carriers for suits, for shirts and for dresses; document cases; wallets; purses are similar to the earlier clothing garments. Clothing garments in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. Goods such as bags, purses, etc. in Class 18 are related to articles of clothing in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of clothing because they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered to be similar.

The contested toilet bags; beauty cases are similar to the opponent’s suitcases. These goods have the same purpose, namely to transport and store something. They may be manufactured by the same undertakings and target the same relevant public. Furthermore, they can be sold in the same retail outlets.

The contested shooting sticks are devices that resemble a walking stick, having a spike at one end and a folding seat at the other (information extracted from Collins dictionary on 09/07/2019). Therefore, they have the same purpose (being aids for walking) and method of use as the opponent’s canes. These goods can be produced by the same producers and target the same relevant public. Furthermore, they can share distribution channels. Therefore, they are similar.

The contested parts and fittings for umbrellas are similar at least to a low degree to the opponent’s umbrella. The parts and fittings in question may include some parts and fittings that are produced and sold by the same undertaking that manufactures the final product and that are available to the same general purchasing public. Furthermore, they may be complementary. For the same reasons, the contested parts and fittings for parasols are similar at least to a low degree to the opponent’s sun umbrellas.

The contested music cases; 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, walking sticks, shooting sticks are similar to a low degree to the opponent’s products of leather and imitation leather.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), products of leather and imitation leather does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors.

When comparing the abovementioned contested goods with the opponent’s vague term products of leather and imitation leather without further examples or an express limitation by the opponent clarifying the term, it cannot be assumed that they have the same purpose, that their methods of use coincide, or that they share the same distribution channels or whether they are in competition or complementary. However, their nature can be considered the same as they are leather goods and it is reasonable to assume that the goods may be produced by the same companies, given that the required knowhow and machinery (i.e. to cut leather) may also be the same. Therefore, these goods can only be found similar to a low degree.

Contested goods in Class 25

Clothing; shoes are identically contained in both lists of goods (including synonyms).

The contested children's wear; outerwear; beachwear; gloves; scarves; socks; hosiery; belts (clothing); baby wear; apparel; children's apparel; baby apparel; bibs; leather belts are included in the broad category of the earlier clothing garments. Therefore, they are identical.

The contested footwear includes, as a broader category the earlier shoes articles. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested boots; wellington boots are included in the broad category of the earlier shoes. Therefore, they are identical.

The contested headwear; headgear are similar to the earlier clothing garments because they coincide in their purpose, that is to cover parts of the human body. These goods can also have the same distribution channels, relevant public and producer.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as 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.

Therefore, the contested the bringing together, for the benefit of others of a variety of: travelling bags, travel cases, trunks, luggage, wheelie cases, suitcases, walking sticks, umbrellas, parasols, clothing, footwear, children's wear, baby wear, apparel, children's apparel, baby apparel, outerwear, beachwear, bibs, gloves, scarves, socks, hosiery, shoes, boots, wellington boots, belts (clothing), leather belts; 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 are similar to a low degree to the opponent’s trunk and suitcases; umbrella, sun umbrella; canes; clothing garments, shoes; shoes articles.

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 are dissimilar to any of the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are only similar.

The contested advertising services; promotional services are dissimilar to all the goods covered by the earlier right for the following reasons.

Advertising and promotional services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services; promotional services are fundamentally different in nature, purpose and method of use from the manufacture of goods. These services have different producers/providers and target different publics through different distribution channels. The fact that any of the opponent’s goods may appear in advertisements is insufficient for finding similarity.

For the same reasons, the contested information advisory services relating to advertising and promotional services, are dissimilar to all the opponent’s goods in Classes 18 and 25, as the above consultancy and information services constitute an integral part of the services to which that consultancy relates.

The contested information advisory services in relation to the above compared services, namely information advisory services all relating to the bringing together, for the benefit of others of a variety of: 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, parts and fittings for all the aforesaid goods, clothing, footwear, headgear, children's wear, baby wear, apparel, children's apparel, baby apparel, outerwear, beachwear, bibs, gloves, headwear, scarves, socks, hosiery, shoes, boots, wellington boots, belts (clothing), leather belts; 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 are dissimilar to all the opponent’s goods in Classes 18 and 25, as it is not common in the market for the manufacturer of articles in Classes 18 and 25 to provide such information services. In addition, the contested services have nothing in common in terms of nature, purpose, method of use with the opponent’s goods.

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 and similar to various degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	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).

Both signs are figurative marks. The earlier mark is composed of a verbal element ‘MINT’ depicted in a slightly stylised lower case letters in black with a green dot a above the letter ‘i’. The contested sign consists of a verbal element ‘MINTIE’ reproduced also in slightly stylised letters in black with a star element above the second letter ‘i’. Neither of the signs has a meaning for the public in the relevant territory; therefore, they are of normal distinctiveness for all the relevant goods and services. Neither of the signs has element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the letters ‘M-I-N-T’ (and their sound). However, they differ in the last two letters (and their sound) ‘-I-E’ of the contested sign, which have no counterparts in the earlier mark.

Considering that the first parts of the conflicting marks are identical it must be recalled that 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.

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

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.

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

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).

The global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

As established in the previous sections of this decision, the goods and services covered by the trade marks in dispute have been found partly identical, partly similar to various degrees and partly dissimilar. They are directed at the public at large with an average degree of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness.

The signs are considered visually and aurally similar to an above average degree, as they differ only the last two letters of the contested sign that have no counterparts in the earlier mark (‘-I-E’). In addition, the fact that the coinciding letters/sounds are placed at the beginning of the signs is of crucial importance and will not go unnoticed. This is because, as mentioned above in this decision, consumers generally tend to focus on the beginning of a sign when encountering a trade mark. Furthermore, there is no relevant conceptual difference that could help the consumers to distinguish between signs.

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). Therefore, bearing in mind the principles of interdependence and imperfect recollection, regardless of the degree of similarity between the goods, a likelihood of confusion on the part of the public in the relevant territory cannot be safely excluded.

The applicant refers to various trade mark registrations that consists of or incorporate the element ‘MINT’ and are owned by the applicant, e.g. EUTM No 3 992 005 ‘MINT’ (figurative), EUTM No 7 404 874 ‘MINT’ (figurative), EUTM ‘MINT’ No 9 499 450 (word mark), EUTM No 15 822 844 ‘MINTY’ (figurative), United Kingdom trade mark registration No UK00002583303 ‘MINT VELVET’ (word mark). However, considering that the current opposition is filed against the European Union trade mark application No 17 439 712 ‘MINTIE’ (figurative) the assessment of the likelihood of confusion is to be made between this sign and the opponent’s earlier Spanish trade mark registration No 2 996 858; therefore any other trade marks owned by the applicant have no bearing on these proceedings.

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 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 rest of the contested 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.

For the sake of completeness, it must be mentioned that the opposition must fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services 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

Dorothée SCHLIEPHAKE

Sandra KASPERIUNAITE

Liliya YORDANOVA

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.