OPPOSITION No B 3 049 940

bonprix Handelsgesellschaft mbH, Haldesdorfer Straße 61, 22179 Hamburg, Germany (opponent), represented by Nicola Franzky, c/o Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (employee representative)

a g a i n s t

Guangzhou Caihong leather Co.,Ltd, 301,6# Wangshengtang LiantangQian St., Guang Yuan West Rd,Yuexiu Dist., Guangzhou China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), Seregno (MB), Italy (professional representative).

On 12/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 940 is partially upheld, namely for the following contested goods:

Class 25: Jackets [clothing]; sweaters; pelisses; corsets [underclothing]; brassieres; clothing of imitations of leather; layettes [clothing]; swimsuits; waterproof clothing; sandals; football shoes; shoes; hats; hosiery; gloves; scarfs; fur stoles; belts made of leather; wedding dresses.

2. European Union trade mark application No 17 775 801 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 775 801 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 10 500 619 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

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Jackets [clothing]; sweaters; pelisses; corsets [underclothing]; brassieres; clothing of imitations of leather; layettes [clothing]; swimsuits; waterproof clothing; sandals; footwear uppers; football shoes; shoes; hats; hosiery; gloves; scarfs; fur stoles; belts made of leather; wedding dresses.

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.

The contested Jackets [clothing]; sweaters; pelisses; corsets [underclothing]; brassieres; clothing of imitations of leather; layettes [clothing]; swimsuits; waterproof clothing; sandals; football shoes; shoes; hats; hosiery; gloves; scarfs; fur stoles; belts made of leather; wedding dresses are included in the broad categories of the opponent’s Clothing, footwear, headgear, respectively. Therefore, they are identical.

The contested footwear uppers (is the part of a shoe that helps hold the shoe to the foot. It is usually connected to the sole by a strip of leather, rubber, or plastic that is stitched between it and the sole and is often decorated) have different natures and purposes from the opponent’s goods. Furthermore, they are usually distributed through different channels, they are manufactured by different undertakings and aimed at different consumers. Therefore, they are dissimilar.

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 to be average.

c) The signs

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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public since the common word ‘RAINBOW’ is meaningful in English and the Opposition Division considers that this increases the likelihood of confusion between the signs.

The word ‘RAINBOW’ included in both signs has a meaning of ‘an arch of different colours that sometimes appears in the sky when it is raining’. As this element does not describe any characteristics of the goods in question i.e. is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The word ‘LEATHER’ of the contested sign will be understood as meaning ‘a strong material made from animal skin that is used for making shoes, clothes, bags, etc’. This term may refer to the characteristics of some of the goods and, thus, it is non-distinctive in relation to part of the relevant goods, such as Jackets [clothing]; sandals; shoes; belts made of leather. For part of the goods (in particular layettes [clothing]), the distinctiveness of this word is average, as it has no descriptive or otherwise weak character in relation to these goods.

In the contested sign the globe device will be perceived as such as well as the irregular outline in the background of the globe.

It should be noted 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). The slight stylisation of the verbal elements of both signs is minimal and it will not be perceived by consumers as an element indicating the commercial origin of the goods at issue.

The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the distinctive verbal element ‘RAINBOW’. It is the sole verbal element of the earlier mark and the first verbal element of the contested sign. The signs differ in the second word, ‘LEATHER’, of the contested sign having a varying degree of distinctiveness. They also differ in the figurative elements of the contested sign and in the stylisation of the verbal elements of both signs, which do not constitute elements which are able to offset the similarity based on the verbal elements as their role is secondary.

Bearing all the above, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. On account of the coincidence in the notion of the distinctive element ‘RAINBOW’ and considering that the word ‘LEATHER’ of the contested sign is considered non-distinctive for part of the goods at issue, the signs are conceptually similar to at least an average degree. The contested mark’s figurative elements do no alter this assessment, as they will play a secondary role.

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 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

The goods compared are partially identical and partially dissimilar.

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. The degree of attention of the relevant public is average. The marks in dispute have been found to be visually, aurally and conceptually similar to at least an average degree.

The 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.

Therefore, in an overall assessment, taking into account that the sole verbal distinctive element of the earlier mark is entirely contained in the contested sign as its initial, separately identifiable, distinctive word element, it is reasonable to assume that when confronted with the contested sign in relation to identical goods, consumers are likely to make a connection between the marks and believe that these goods come from the same undertaking or, as the case may be, economically linked undertakings.

The contested mark may be perceived by consumers as a sub-brand of the opponent’s mark, that is to say that the identical goods are manufactured by the same undertakings or, as the case may be, by economically linked undertakings (see 22/06/1999, C-342/97, Lloyd, EU:C:1999:323, § 26). In particular, as it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another (23/10/2002, T‑104/01, Fifties, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ewelina SLIWINSKA

Marzena MACIAK

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.