OPPOSITION No B 3 047 556

Mirto Corporación Empresarial, S.L., C/ Emilio Muñoz, 57, 28037 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Mitos Swimwear Limited, Amathundos 60, Limassol, Cyprus (applicant), represented by Δημητρης Προκοπιου, Ναυαρινου 18-20, 10680 Αθηνα, Greece (professional representative).

On 16/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 556 is upheld for all the contested goods.

2. European Union trade mark application No 17 520 611 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 17 520 611 , namely against all the goods in Class 25. The opposition is based on:

1) European Union trade mark registration No 1 653 351 ‘MIRTO’.

2) Spanish trade mark registration No 143 300 .

3) Spanish trade mark registration No 2 581 059 .

4) Spanish trade mark registration No 2 983 724 .

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based, namely, the European Union and Spanish trade marks listed as earlier rights 1-4 in section ‘REASONS’ of this decision. As the opposition is based on, and proof of use was requested for, more than one earlier trade mark, the Opposition Division finds it appropriate to first examine the opposition and the evidence of proof of use in relation to the opponent’s European Union trade mark registration No 1 653 351 ‘MIRTO’.

The date of filing of the contested application is 23/11/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 23/11/2012 to 22/11/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25: Clothing, footwear, headgear.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 30/04/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 05/07/2019 to submit evidence of use of the earlier trade mark. On 04/07/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Annex A, referring to Attachment C, submitted by the opponent, on 20/07/2018, to prove reputation of the earlier mark and, in the opponent’s observations of 04/07/2019, requested to be considered as evidence of proof of use. The attachment contains the following documents:

 Document 1: extracts from Wikipedia, from the digital financial newspaper elEconomista.es (dated 04/12/2016) and from the opponent’s website https://eng.mirto.com (printout date — 26/04/2018). They reveal that the company ‘MIRTO’ was founded in 1956 and that ‘MIRTO’ is its main brand. Initially dedicated to the manufacture of shirts, it currently designs, manufactures and markets a wide range of fashion products. The opponent is described as one of the leading companies in the fashion sector for men, also marketing an extensive collection for women. The opponent’s products can be found in the best multi brand stores, boutiques, department stores, in its own shops and online at www.shop.mirto.com.

 Document 2: a statement from a member of the Board of Directors of El Corte Inglés, dated 26/05/2015, in Spanish and translated into English, which indicates that readymade clothing goods bearing the mark ‘MIRTO’ have been offered for sale uninterruptedly in their department stores since 1975 and that about 1.5 million items bearing this mark had been sold over the five years preceding the date of the statement. The document also specifies that the ‘MIRTO’ goods are sold in all El Corte Inglés stores and that the mark enjoys fame and prestige among consumers, who perceive it as a quality brand and that it is one of the most prestigious Spanish trade marks in the sphere of fashion for men’s and women’s shirts and other types of clothing.

 Document 3: certificate issued by the managing director of the Spanish Association of Reputed Brands (AMRE), dated 08/01/2016, and attesting to the continuous presence of the company ‘MIRTO’ in the association since 29/01/2004, due to the reputed status of its trade mark ‘MIRTO’. The document clarifies that AMRE only admits companies which own one or more reputed and/or well-known trade marks and that in order to determine whether or not a mark is reputed and/or well-known, AMRE observes the objective criteria laid down by the World Intellectual Property Organisation (WIPO) and the relevant provisions of Spanish Law on Trademarks. The evidence also contains proof of payments of the association’s annual fee made by the opponent from 2013 to 2017. It also submitted the extract from the association’s website, https://www.marcasrenombradas.com/ (date of printout — 20/04/2018), corresponding to the trade mark ‘MIRTO’, which is entitled ‘The perfect shirt’ and which mentions ‘always round the shirt, the product that has given him fame and recognition among users and distributors, “MIRTO” has known how to diversify its offer’, as well as ‘MIRTO’ products ‘are sold in more than 25 countries, in the best multi-brand stores, in corners and their own shop, in El Corte Inglés and in prestigious boutiques and international chains’. Extract from the publication El atlas de la moda (the Fashion Atlas), published in 2018, by the Forum of Reputed Brands in collaboration with the Spanish trade mark and Patent Office (SPTO), which measures the international impact of the leading Spanish fashion brands in the sector, including the ‘MIRTO’ brand. The document indicates that the brand is present in 20 countries, including Portugal and the United Kingdom.

 Document 4: sales figures of ‘MIRTO’ goods in Spain and in several countries of the EU from 2013 to 2017 (Greece, Finland, Ireland, France, the United Kingdom, Italy). The figures of sales in Spain are, for each year, in tens of millions of euros. They reach several tens of thousands of euros in France and the United Kingdom.

 Document 5: a list of the opponent’s trade mark registrations for ‘MIRTO’ trade marks (word or figurative) as well as other marks including the element ‘MIRTO’, in different countries around the world.

 Document 6: extracts from MIRTO Press Books for 2012-2017. This includes a very large number of advertisements/articles in various magazines such as Hola, Marca, Luomo, DT, Vanity Fair, Man, Best Fashion, Actualidad Económica, Magazine El Mundo, Esquire, Telva, Vogue, GQ, Mía, Forbes, Bite Men and many others, mainly in Spanish (and some in English), as well as on social media (Instagram, Twitter, etc.). In the majority of them, either the trade mark ‘MIRTO’ is mentioned or the figurative marks , , can be seen in relation to a broad range of items of clothing such as shirts, jackets, T-shirts, belts, cloaks, suits, for men and for women. Many articles feature famous Spanish personalities, such as actors, members of the Spanish Royal family, football or basketball players, TV journalists and singers.

 Document 7: undated pictures showing famous TV programme presenters who, as claimed by the opponent, wear ‘MIRTO’ clothing. A copy of the programme for the event ‘Oh Cuba’ of 18/06/2017-26/08/2017 in Generalife gardens, Granada, where ‘MIRTO’ is indicated, inter alia, brands of clothes worn by musicians.

 Document 8: printouts from the opponent’s profiles on Instagram (which demonstrate 10,200 followers and 1,173 posts), on Twitter (with 1940 followers and 9091 ‘likes’) and on Facebook (6141 followers and 6208 ‘likes’). All printouts bear their printing date of 24/4/2018. The word mark ‘MIRTO’ and the figurative mark is seen on the top left corner of all the abovementioned social media profiles.

 Document 9: a report, issued on 05/02/2018, by the ‘Audijuris auditors and consultants’, and certifying the business turnover and advertising expenditure relating to the ‘MIRTO’ trade mark. The sales figures shown are above EUR 14 million in 2013, above EUR 15 million in 2014, above EUR 18 million in 2015 and above EUR 20 million in 2016 and 2017. The advertising expenses vary between EUR 460 000 and EUR 640 000 in the same period.

 Document 10: printouts from the opponent’s website, https://esp.mirto.com/friends/ (printed on 15/02/2018), containing pictures of Spanish social, political and television figures wearing ‘MIRTO’ clothing. The majority of the photographs are dated 2016 for their upload.

 Document 11: an article from www.fueradeserie.expansion.com (in Spanish and English), dated 10/06/2014, reporting that the company ‘Mirto’ has been distinguished with the National Award for Small- and Medium-sized Enterprises in the Fashion Industry, granted by the Ministry of Industry, Energy and Tourism of Spain. Extract from the opponent’s website reporting on that prize. Press publications echoing the news in the newspaper EXPANSION.

 Document 12: pictures of stands bearing the sign ‘MIRTO’, exhibiting the opponent’s clothing, which, according to the opponent, reflect its participation in trade fairs. The photographs are not dated and no further information regarding the place or time of these events is submitted by the opponent.

 Document 13: extracts from the 2014, 2015, 2016 and 2017 ‘MIRTO’ catalogues.

Annex B, submitted by the opponent, on 04/07/2019, and containing the following documents:

 Document 1: an undated picture containing various types of inner and outer labels of ‘MIRTO’ products and one additional picture in the opponent’s observations showing the mark affixed on the goods:

.

 Document 2: Fashion catalogues of 2012 and 2013 showing the opponent’s clothing and bearing the mark on their front page.

The Opposition Division also takes into account the evidence submitted by the opponent as Attachment B, on 20/07/2018, to prove reputation of the earlier mark, which contains copies of decisions/judgments from the Spanish Patents and Trade Marks Office (SPTO), from a Spanish Court, from the Office and from WIPO’s Arbitration and Mediation Center, all recognising the reputation of the ‘MIRTO’ trade mark in Spain.

In accordance with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the opposing trade mark for the goods or services for which it is registered and on which the opposition is based.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof of the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31).

Place of use

The sales figures of ‘MIRTO’ goods for 2013-2017 (Annex A, document 4), confirmed by the auditors’ report (Annex A, document 9), demonstrate that the opponent’s ‘MIRTO’ goods were sold, inter alia, in Spain, France and the United Kingdom during all these years. Extracts from MIRTO Press Books (Annex A, document 6), including publications in various Spanish magazines, as well as a statement from a member of the Board of Directors of El Corte Inglés (Annex A, document 2), a certificate from the managing director of the Spanish Association of Reputed Brands (AMRE), extracts from the publication El atlas de la moda (the Fashion Atlas) (Annex A, document 3) and information regarding a National Award received by the opponent (Annex A, document 11) demonstrate that the opponent has used the mark ‘MIRTO’ at least in Spain. Therefore, the evidence relates to the relevant territory.

Time of use

The majority of the evidence is dated within the relevant period or makes reference to the relevant period. According to settled case-law, evidence referring to use made outside the relevant timeframe can be taken into account if it contains conclusive indirect proof that the mark must have been put to genuine use also during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, the evidence referring to use outside the relevant period comprises of some printouts dated 2018. However, these merely confirm the use of the opponent’s mark within the relevant period, since the use that they demonstrate is quite close in time to the relevant period and demonstrate continued use when considered in connection with the other evidence.

Similarly, the undated pictures submitted by the opponent, demonstrate or refer to the opponent’s mark or to the same goods as can be found in the evidence related to the relevant timeframe. Therefore, it is considered that the evidence can be linked to the relevant period.

Extent of use

In view of the market situation in the particular industry or trade concerned, it must be evaluated whether or not the material submitted permits the conclusion that the owner has seriously tried to acquire a commercial position in the relevant market. In this regard, all of the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

It has been demonstrated through turnover figures and extracts from MIRTO Press Books that the opponent offered and sold clothing articles under the mark ‘MIRTO’ from 2013 to 2017, at least in Spain, France and the United Kingdom. Although the information regarding the commercial volume of the goods sold in these countries can only be established from information submitted by the opponent, the total sales figures for these years (albeit not broken down by countries) were confirmed in the report, issued on 05/02/2018, by the ‘Audijuris auditors and consultants’. Moreover, it is necessary to take into account the fact that the opponent’s goods under the trade mark ‘MIRTO’ were offered and sold for a continuous period of more than five years and were extensively advertised in various press media during the whole of the relevant period. This is also supported by the written statement of a member of the Board of Directors of El Corte Inglés, the largest department store chain in Spain, confirming that the opponent’s clothing bearing the ‘MIRTO’ mark were offered for sale at all outlets of El Corte Inglés since 1975 and sold in significant quantities. In addition, the document signed by the managing director of the Spanish Association of Reputed Brands (AMRE) certifies that the opponent has been a full member of the association, which only admits companies owning reputed or well-known trade marks, since 2004 and, according to the association’s records, the trade mark ‘MIRTO’ has the status of a reputed mark in Spain. Furthermore, the fact that the opponent has been distinguished with the National Award for Small- and Medium-sized Enterprises in the Fashion Industry by the Ministry of Industry, Energy and Tourism of Spain, as well as the decisions/judgments from the Spanish Patents and Trade Marks Office (SPTO), Spanish Court and the Office Board of Appeal, acknowledging reputation and well-known character of the trade mark ‘MIRTO’ in Spain, are additional indications attesting to the extensive use of the mark in question. Therefore, the evidence submitted makes it possible to clearly rule out a token use for the sole purpose of preserving the rights conferred by the mark in question and demonstrates that the opponent’s use of the mark ‘MIRTO’ for clothing was such as to maintain an outlet for the goods, and that the opponent has seriously tried to acquire a commercial position in the relevant fashion market by using its mark ‘MIRTO’ within the relevant period.

Although the majority of the evidence relates to Spain, it also demonstrates quite significant and regular sales in France and the United Kingdom from 2013 to 2017. Taking into account that Spain, France and the United Kingdom are among the largest EU countries by area and population, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark in the European Union. However, this conclusion only applies for some of the registered goods, as will be detailed below under the section entitled ‘Nature of use’.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The evidence submitted shows that the earlier sign was used in such a way as to establish a clear link between the goods and the entity responsible for their marketing. Therefore, the Opposition Division considers that the evidence shows use of the sign as a trade mark.

The evidence submitted by the opponent, shows the use of the mark in relation to various articles of clothing as it is registered, namely, as the word mark ‘MIRTO’, or on the goods and in various press publications containing the goods, as the figurative mark , which, in some cases, was combined with additional descriptive indications as , . Since the stylisation of the verbal element ‘MIRTO’ in the figurative marks used, as well as the presence of the rectangular frame and/or dark background are rather decorative features, and since the descriptive additions referring to the place where the goods are manufactured and the year from which they are manufactured (Madrid 1956) are purely informative non-distinctive indications, the Opposition Division considers that these additions do not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all of the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45-46.)

In the present case, the evidence mainly shows use of the earlier mark for various articles of clothing, such as shirts, jackets, T-shirts, belts, cloaks, suits (for men and for women), belonging to the following category in the specification: clothing. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for the following goods:

Class 25: Clothing.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 European Union trade mark registration No 1 653 351 ‘MIRTO’, for which genuine use has been proven.

a) The goods

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

Class 25: Clothing.

The contested goods are the following:

Class 25: Swimming costumes; bikinis; beach wraps; bathing suit cover-ups.

The applicant argues that the goods are dissimilar, since the contested goods are sold in specific stores selling swimwear and beachwear, whereas the opponent’s goods are clothing targeting another circle of consumers. In support of its arguments, the applicant submits extracts from its website where the goods in question are offered for sale.

However, the comparison of the goods must be based solely on the wording of the list of goods registered or applied for. Any actual or intended use not stipulated in the list of goods is, in contrast, irrelevant (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Likewise, the particular circumstances in which the goods in question are marketed must not be taken into account in the analysis of the likelihood of confusion (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73).

In the present case, the contested swimming costumes; bikinis; beach wraps; bathing suit cover-ups are particular articles of clothing and, therefore, included in the broad category of the opponent’s clothing. For this reason and contrary to the applicant’s arguments, the goods in question 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 are directed at the public at large. The degree of attention is considered average.

c) The signs

MIRTO
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 earlier mark is a word mark ‘MIRTO’. As pointed out by the applicant, this word has a meaning in Spanish. However, even if ‘mirto’ means ‘myrtle’, it is not commonly used in Spanish and the more common word is ‘arrayán’ (04/07/2016, R 1871/2015‑4, mirrio / MIRTO, § 25). More importantly the earlier mark has no graphic references to any plant and the goods themselves do not evoke any association with any plant; even less with an uncommon plant such as the myrtle. Consequently, it is unlikely that the Spanish-speaking part of the public will associate it with any meaning. In addition, for a substantial part of the public, the verbal element ‘MIRTO’ is meaningless (e.g. the English- and French-speaking parts of the public). Therefore, the Opposition Division considers that the verbal element ‘MIRTO’ of the earlier mark will be perceived as meaningless by, at least, the vast majority of the relevant public and possesses an average degree of distinctiveness in relation to the goods in question.

The contested sign is a figurative mark containing the verbal element ‘MITOS’, written in slightly stylised upper-case letters. The figurative elements above this verbal element are composed of a fairly realistic depiction of a needle and a circle-shaped element, which may be perceived as a stylised depiction of a string of thread or ball of yarn, or simply as a composition of three interrupted circles of different sizes. The applicant claims that the verbal element ‘MITOS’ means the yarn used for weaving in Greek and the figurative element, which essentially refer to the meaning of the word ‘MITOS’, also refer to the ancient Greek tale of Minotauros and the Labyrinth used in ancient times. However, as it is not possible to univocally determine the interpretation of the figurative element and it cannot be generally assumed that the relevant public throughout the European Union is also familiar with ancient Greek tales, the applicant’s version is a rather subjective interpretation that, in the absence of further evidence in that respect, cannot be considered to represent the common and generalised perception of the average consumers. Although the verbal element ‘MITOS’ may be understood by the Spanish-speaking public as referring to ‘myth’, a well-known story, which was made up in the past to explain natural events or to justify religious beliefs or social customs, for the remaining part of the public (e.g. the English- or French-speaking parts of the public), this word does not convey any particular meaning. Be that as it may, the verbal element ‘MITOS’ has an average degree of distinctiveness in relation to the goods in question as, even if perceived as meaningful, it does not describe or allude to any characteristics of these goods.

The distinctiveness of the figurative elements is somehow limited in the contested sign, as a depiction of a needle is very common in relation to the contested goods (which are sewn), and the same applies to the remaining element, if it is perceived as a stylised depiction of a string of thread or as a ball of yarn. In the case when this figurative element is not attributed with any particular meaning and perceived as some fanciful composition of circles, it has an average degree of distinctiveness. However, account must also be taken of the fact that 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). Therefore, despite the top position of these figurative elements, the relevant public will attribute more attention to the verbal element ‘MITOS’ of the contested sign.

Taking into account all the above and the possible perceptions of the marks’ verbal elements, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will perceive the earlier mark and the verbal element of the contested sign as meaningless, such as the English- and French-speaking parts of the public, as, in the absence of any meanings that could differentiate them from each other, these parts of the public are more likely to confuse the signs.

Visually, the signs coincide in the sequence of letters ‘MI(*)TO(*)’, which constitutes four out of five letters of the earlier mark and of the verbal element of the contested sign. The signs differ in the additional letters ‘R’ in the middle of the earlier mark and ‘S’ at the end of the verbal element of the contested sign. The signs also differ in the figurative elements, the verbal element’s stylisation and in the colour of the contested sign.

The earlier mark and the verbal element of the contested sign both are composed of the same number of letters, namely five, four of which coincide. The verbal element of the contested sign reproduces the first two and the last two letters of the earlier mark, and the difference in the additional letters ‘R’ in the middle of the earlier mark and ‘S’ at the end of the contested sign will not distract the consumers’ attention from the fact that the verbal elements in both signs coincide in the majority of their letters.

The applicant emphasises the importance of the figurative elements, colour and stylisation of the contested sign. However, taking into account that distinctiveness of, at least, one figurative element of the contested sign is limited and the other one, depending on the relevant public’s perception, is either of limited distinctiveness or will be attributed less attention than the verbal element (for the reasons explained above), and that the colour and slight stylisation of the contested sign are rather decorative features, they will not outweigh the abovementioned commonalities between the earlier mark and the verbal element of the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in the parts of the relevant territory, on which the present assessment focuses, the pronunciation of the signs coincides in the sound of the letters ‘MI(*)TO(*)’, present identically in the verbal elements of both signs. The pronunciation differs in the sound of the third letter ‘R’ of the earlier mark and of the last letter ‘S’ of the contested sign (if this letter is pronounced by the relevant public). The figurative elements of the contested sign will not be referred to aurally by the relevant consumers.

Both words, ‘MIRTO’ of the earlier mark and ‘MITOS’ of the contested sign are composed of the same number of letters and, when pronounced, they will have similar rhythm and intonation. As the slight difference in pronunciation in the middle of the earlier mark and, for at least part of the public, at the end of the contested sign will not create any significant aural difference between them, the signs are considered aurally similar to at least an average degree.

Conceptually, neither of the verbal elements of the signs has a meaning for the public in the relevant territory subject of the current assessment. However, since the figurative element depicting a needle has a meaning, even with a limited impact, and irrespective of perception of the remaining figurative element of the contested sign, it creates some conceptual difference from the meaningless earlier mark. Therefore, 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.

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 been extensively used and enjoys an enhanced scope of protection. 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.

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/or 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.

The contested goods are identical and they target the public at large who have an average degree of attention. The distinctiveness of the earlier mark is normal.

As detailed in section c), the earlier mark and the contested sign are visually similar to an average degree, aurally similar to at least an average degree and not similar conceptually. The verbal element of the contested sign, which will be attributed most attention by the relevant consumers, reproduces four out of five letters of the earlier mark. Although the presence of one differing letter ‘R’ in the middle of the earlier mark and ‘S’ at the end of the verbal element of the contested sign, as well as the figurative elements in the contested sign (the distinctiveness of at least one of which is somehow limited) create some perceptible differences between the signs, they will not distract the consumers’ attention from the fact that the verbal elements in both signs coincide in the majority of their letters. Moreover, the impact of the abovementioned differences is minor from the aural perspective, as both signs will be pronounced in a similar way. The same applies to the impact of the concept conveyed by the element with limited distinctiveness in the contested sign, as the consumers’ attention will not focus on it.

Taking into account 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), it is highly conceivable that the relevant consumers, expressing only an average degree of attention, will be led to believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings.

The applicant refers to some judgments of the Court in support of its arguments. In this regard, the Opposition Division notes that it duly takes into account all the relevant trade-mark principles elaborated by the Court and the relevant case-law. It is, however, considered that taking into account differing factual circumstances, the particular examples quoted by the applicant are not comparable to the present case. Therefore, the applicant’s arguments have to be set aside.

Considering all the above and taking into account the identity of the goods and the abovementioned principle of interdependence, the Opposition Division finds that there is a likelihood of confusion, on the part of the English- and French-speaking parts of the public who will perceive the verbal elements in both signs as meaningless. 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 European Union trade mark registration No 1 653 351 ‘MIRTO’. 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 and reputation 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 European Union trade mark registration No 1 653 351 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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, 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

Claudia ATTINÀ

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.