OPPOSITION No B 3 048 853

Michel Alard, Chateau du Henan, 29920, Nevez, France (opponent)

a g a i n s t

Rdk Productions Daniel Duniak, ul. Kormorana 10, 11-034 Tomaszkowo, Poland (applicant), represented by Jerzy Woznicki, ul. Nowowiejska 1/3 lok.9, 00-643 Warszawa, Poland (professional representative).

On 10/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 853 is partially upheld, namely for the following contested goods and services:

Class 25: Clothing; Ready-to-wear clothing; Outerclothing; Men's and women's jackets, coats, trousers, vests; Topcoats; Furs [clothing]; Woolen clothing; Sports jackets; Knit jackets; Morning coats; Wind vests; Leather waistcoats; Boleros; Jumpers; Sweaters; Shorts; Shirts; Tee-shirts; Vest tops; Skirts; Ladies' dresses; Evening wear; Wedding dresses; Dresses made from skins; Trousers of leather; Corduroy trousers; Tops [clothing]; Suit coats; Suits; Overalls; Coveralls; Underwear, Except underwear for women; Infant wear; Layettes [clothing]; Waist belts; Leather belts [clothing]; Shawls and headscarves; Neckerchiefs; Scarves; Headbands [clothing]; Balaclavas; Gloves [clothing]; Gloves including those made of skin, hide or fur.

Class 35: Retail or wholesale services in relation to clothing.

2. European Union trade mark application No 17 545 914 is rejected for all the above goods and services. It may proceed for the remaining goods and 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 17 545 914 for the figurative mark . The opposition is based on European Union trade mark registration No 16 662 462 for the word mark ‘SHIBARI’. 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 on which the opposition is based are the following:

Class 25: Lingerie.

The contested goods and services are the following:

Class 25: Clothing; Footwear; Hats; Ready-to-wear clothing; Outerclothing; Men's and women's jackets, coats, trousers, vests; Topcoats; Furs [clothing]; Woolen clothing; Sports jackets; Knit jackets; Morning coats; Wind vests; Leather waistcoats; Boleros; Jumpers; Sweaters; Shorts; Shirts; Tee-shirts; Vest tops; Skirts; Ladies' dresses; Evening wear; Wedding dresses; Dresses made from skins; Trousers of leather; Corduroy trousers; Tops [clothing]; Suit coats; Suits; Overalls; Coveralls; Underwear, Except underwear for women; Infant wear; Layettes [clothing]; Waist belts; Leather belts [clothing]; Shoes; Children's footwear; Lace boots; Leather shoes; Slip-on shoes; Winter boots; Sports shoes; Athletics shoes; Gymnastic shoes; Mountaineering shoes; Hunting boots; Snow boots; Sandals; Sandal-clogs; Slippers; Leather slippers; Caps [headwear]; Fur hats; Berets; Shawls and headscarves; Neckerchiefs; Scarves; Headbands [clothing]; Balaclavas; Gloves [clothing]; Gloves including those made of skin, hide or fur; Shoe straps.

Class 35: Retail or wholesale services in relation to clothing, footwear, headgear; administrative processing and organising of mail order services; advertising, marketing and promotional services; internet marketing; sales promotion for others; demonstration of goods; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; commercial intermediation services; provision of an on-line marketplace for buyers and sellers of goods and services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 25

The contested clothing includes, as a broader category the opponent’s lingerie. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The applicant has limited its list of goods and services to exclude underwear for women. However, the contested ready-to-wear clothing; outerclothing; men's and women's jackets, coats, trousers, vests; topcoats; furs [clothing]; woolen clothing; sports jackets; knit jackets; morning coats; wind vests; leather waistcoats; boleros; jumpers; sweaters; shorts; shirts; tee-shirts; vest tops; skirts; ladies' dresses; evening wear; wedding dresses; dresses made from skins; trousers of leather; corduroy trousers; tops [clothing]; suit coats; suits; overalls; coveralls; underwear, except underwear for women; infant wear; layettes [clothing]; waist belts; leather belts [clothing]; shawls and headscarves; neckerchiefs; scarves; headbands [clothing]; balaclavas; gloves [clothing]; gloves including those made of skin, hide or fur are all different articles of clothing. As such they are at least similar to the opponent’s goods lingerie because they are of the same or very similar nature, they serve the same purpose to cover and protect the body, they are goods addressed to same public, the manufacturers can coincide and they can be purchased at the same points of sale.

The contested footwear; hats; shoes; children's footwear; lace boots; leather shoes; slip-on shoes; winter boots; sports shoes; athletics shoes; gymnastic shoes; mountaineering shoes; hunting boots; snow boots; sandals; sandal-clogs; slippers; leather slippers; caps [headwear]; fur hats; berets; shoe straps are dissimilar to the opponent’s lingerie in Class 25. In particular, these contested goods are different articles of headgear or footwear. Even though end consumers coincide and these goods are used to cover and protect certain parts of the human body, this is not enough to justify a finding of similarity. Footwear and underwear are not usually sold close to each other in the same department, companies producing footwear rarely (if ever) produce underwear and vice versa. None of the other criteria coincide.

Contested services in Class 35

Retail or wholesale 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, given that clothing has been found above to be identical to the opponent’s lingerie, the contested retail or wholesale services in relation to clothing are similar to a low degree to the opponent’s lingerie.

The remaining services in class 35, namely retail or wholesale services in relation to footwear, headgear; administrative processing and organising of mail order services;

advertising, marketing and promotional services; internet marketing; sales promotion for others; demonstration of goods; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; commercial intermediation services; provision of an on-line marketplace for buyers and sellers of goods and services are dissimilar to the opponent’s lingerie. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary.

b) Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is average.

c) The signs

SHIBARI
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 opponent’s mark ‘SHIBARI’ is a word mark and it might be associated with ‘erotic bondage Kinbaku’. Bearing in mind that the relevant goods are ‘lingerie’, for those who will associate the term with a meaning and are acquainted with the practice of erotic bondage, this element is allusive for these goods. However, the Opposition Division does not consider that a significant part of the relevant consumers of lingerie within the European Union would be familiar with a Japanese term. Consequently, the earlier mark is meaningless within the relevant territory and its distinctiveness is considered normal.

The contested mark is a figurative mark, consisting of a verbal element ‘SHEBARI’ in standard typeface and a figurative element representing fastened ribbon, all depicted in black. The ribbon is merely decorative in nature and its distinctiveness in relation to the relevant goods, namely clothing and their retail, is low. Therefore, the verbal element ‘SHEBARI’ is the most distinctive element of the contested sign. It has no meaning for the relevant goods and services and therefore enjoys a normal degree of distinctiveness.

Visually, the signs coincide in six out of seven letters, in the same order, namely ‘SH*BARI’. The signs differ in their third letters, namely ‘I’ versus ‘E’ of the earlier mark and the contested sign, respectively. The signs also differ in the figurative element and stylisation of the contested sign.

However, as mentioned above, the figurative element of the contested sign is decorative in nature and therefore will not distract the consumers’ attention from the verbal element.

Therefore, the signs are considered visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sounds of the letters /SH*BARI/, present identically in both signs. The pronunciation differs in the sound of the third letter /I/ of the earlier mark versus /E/ of the contested sign.

The signs are therefore considered aurally similar to a high degree.

Conceptually, the signs are not similar. Although the verbal elements have no meaning for the relevant public, the figurative element of the contested sign will evoke a concept and this has no counter-part in the earlier mark. Therefore, the signs are not similar conceptually, although this difference does not have much weight due to the element’s low degree of distinctiveness.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for a significant part of the relevant consumers of lingerie within the European Union. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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

In the present case, some of the goods are identical or similar at varying degrees and some of the services are similar to a low degree, while they target the general public. On the contrary, some goods and services are dissimilar. The degree of attention is average. The earlier mark has a normal degree of distinctiveness.

The earlier mark and the contested sign are visually and aurally similar to a high degree. Conceptually, the signs are dissimilar. 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).

Considering all the above, and upon taking into account the high degree of overall similarity between the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public that does not attribute any meaning to ‘SHIBARI’ even for the services found to be lowly similar. Finding likelihood of confusion for a non-negligible part of the public is sufficient for rejecting a European Union trade mark (10/11/2011, T-22/10, Representation of a letter on a pocket, EU:T:2011:651, § 120).Therefore the opposition is partly well founded on the basis of the opponent’s EUTM 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 at varying degrees to those of the earlier trade mark.

The rest of the contested goods and 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 and services cannot be successful.

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

Marianna KONDAS

Stanislava STOYANOVA

Teodora Valentinova TSENOVA PETROVA

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.