OPPOSITION No B 3 056 359

Fernando Ruz Gutierrez, Cataluña, 7-9, 1-1, 08940 Cornella De Llobregat, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Sainth s.r.l., Via Salentini 26, 00185 Roma, Italy (applicant), represented by Francesco Musella, Via dei Fiorentini N.10, 80133 Napoli, Italy (professional representative).

On 31/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 359 is partially upheld, namely for the following contested goods and services:

Class 18: Bags, wallets and other carriers; card holders made of leather; card holders made of imitation leather; briefcases [leather goods]; shoulder belts.

Class 25: Clothing (listed twice); footwear; headgear; gym suits; gowns (listed twice); jackets [clothing]; heavy jackets; coats; dust coats; mackintoshes; trench coats; shirts; tee-shirts; undershirts; jumpers; sweaters; trousers; skirts; waist belts; suspenders; hats; slips [underclothing]; lingerie; gloves [clothing]; sashes for wear; foulards [clothing articles]; neckties; stockings; boxer shorts; vest tops; shoes.

Class 35: Retail services in relation to footwear; retail services in relation to headgear; retail services in relation to clothing; wholesale services in relation to footwear; wholesale services in relation to headgear; wholesale services in relation to clothing; online retail services relating to clothing; mail order retail services for clothing; online retail store services relating to clothing; retail services connected with the sale of clothing.

2. European Union trade mark application No 17 837 014 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 17 837 014 for the figurative mark . The opposition is based on European Union trade mark registration No 17 473 621 for the position 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.

1. The goods and services

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

Class 25: Headgear; clothing; footwear.

The contested goods and services are the following:

Class 18: Saddlery, whips and apparel for animals; walking sticks; umbrellas and parasols; luggage, bags, wallets and other carriers; leatherboard; leather, unworked or semi-worked; leather for harnesses; card holders made of leather; card holders made of imitation leather; moleskin [imitation of leather]; imitation leather; worked or semi-worked hides and other leather; leather and imitation leather; curried skins; fur; briefcases [leather goods]; boxes of leather or leatherboard; boxes made of leather; leather cloth; shoulder belts.

Class 25: Clothing; footwear; headgear; clothing; gym suits; gowns; jackets [clothing]; heavy jackets; coats; gowns; dust coats; mackintoshes; trench coats; shirts; tee-shirts; undershirts; jumpers; sweaters; trousers; skirts; waist belts; suspenders; hats; slips [underclothing]; lingerie; gloves [clothing]; sashes for wear; foulards [clothing articles]; neckties; stockings; boxer shorts; vest tops; shoes.

Class 35: Retail services in relation to footwear; retail services in relation to headgear; retail services in relation to jewellery; retail services in relation to fabrics; retail services in relation to clothing; retail services in relation to bags; retail services in relation to luggage; retail services in relation to yarns; retail services in relation to umbrellas; retail services in relation to sporting articles; retail services in relation to saddlery; wholesale services in relation to footwear; wholesale services in relation to headgear; wholesale services in relation to jewellery; wholesale services in relation to fabrics; wholesale services in relation to clothing; wholesale services in relation to bags; wholesale services in relation to umbrellas; wholesale services in relation to saddlery; wholesale services in relation to yarns; wholesale services in relation to luggage; wholesale services in relation to sporting articles; mail order retail services connected with clothing accessories; retail services in relation to fashion accessories; online retail services relating to clothing; retail services in relation to clothing accessories; retail services relating to furs; online retail services relating to jewelry; online retail services relating to luggage; mail order retail services for clothing; wholesale services relating to sporting goods; wholesale services relating to furs; online retail store services relating to clothing; retail services relating to sporting goods; retail services connected with the sale of clothing and clothing accessories; mail order retail services connected with clothing accessories.

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 18

Contrary to the applicant’s assertions, the contested bags, wallets and other carriers; card holders made of leather; card holders made of imitation leather; briefcases [leather goods]; shoulder belts are similar to the opponent’s clothing as they usually coincide in producer, relevant public and distribution channels.

The contested saddlery, whips and apparel for animals; walking sticks; umbrellas and parasols; leatherboard; leather, unworked or semi-worked; leather for harnesses; moleskin [imitation of leather]; imitation leather; worked or semi-worked hides and other leather; leather and imitation leather; curried skins; fur; luggage; boxes of leather or leatherboard; boxes made of leather; leather cloth do no share any relevant points of similarity with the opponent’s goods. The respective nature, purpose and method of use is different and they are neither in competition nor complementary. Accordingly, they are dissimilar.

Contested goods in Class 25

Headgear; clothing (listed twice in the contested goods); footwear are identically contained in both lists of goods.

The contested shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested gym suits; gowns (listed twice); jackets [clothing]; heavy jackets; coats; dust coats; mackintoshes; trench coats; shirts; tee-shirts; undershirts; jumpers; sweaters; trousers; skirts; waist belts; suspenders; slips [underclothing]; lingerie; gloves [clothing]; sashes for wear; foulards [clothing articles]; neckties; stockings; boxer shorts; vest tops are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Contested services in Class 35

Retail and 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, the contested retail services in relation to footwear; retail services in relation to headgear; retail services in relation to clothing; wholesale services in relation to footwear; wholesale services in relation to headgear; wholesale services in relation to clothing; online retail services relating to clothing; mail order retail services for clothing; online retail store services relating to clothing; retail services connected with the sale of clothing are similar to a low degree to the opponent’s headgear; clothing; footwear.

However, the contested retail services in relation to jewellery; retail services in relation to fabrics; retail services in relation to bags; retail services in relation to luggage; retail services in relation to yarns; retail services in relation to umbrellas; retail services in relation to sporting articles; retail services in relation to saddlery; wholesale services in relation to jewellery; wholesale services in relation to fabrics; wholesale services in relation to bags; wholesale services in relation to umbrellas; wholesale services in relation to saddlery; wholesale services in relation to yarns; wholesale services in relation to luggage; wholesale services in relation to sporting articles; mail order retail services connected with clothing accessories; retail services in relation to fashion accessories; retail services in relation to clothing accessories; retail services relating to furs; online retail services relating to jewelry; online retail services relating to luggage; wholesale services relating to sporting goods; wholesale services relating to furs; retail services relating to sporting goods; retail services connected with the sale of clothing accessories and the opponent’s headgear; clothing; footwear are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Sale 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 sale 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 sale 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 not identical.

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 or similar (to varying degrees) are directed at the public at large and some of them (wholesale services) at professionals. The degree of attention is average.

3. 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 earlier mark is a position mark consisting of an abstract device which, contrary to the applicant’s opinion, resembles a lightning bolt device positioned almost horizontally on a shoe or sock-like garment. As the sign cannot be associated in any way with the goods in question it is, therefore, distinctive to a normal degree.

The contested sign is a purely figurative mark which resembles a lightning bolt device in pink with a thick black border. As no link can be established between the sign and the goods and services concerned, it is normally distinctive.

Visually, despite slight differences in width and length, both signs have a similar contour and broadly match each other, in particular, if the contested sign is turned 90 degrees counter clockwise. However, they differ in the colour pink and the slightly thicker black border of the contested sign.

As explained above, the abstract device in the earlier mark is to be affixed to the product horizontally and as indicated by the applicant, in a particular size and proportion to the product. Furthermore, as it can be used both in respect of the right or left foot, the right or left orientation of the device cannot be part of the assessment. It is also noted that the perspective from which consumers sees the contested sign might determine its vertical or horizontal position due to its abstract nature. Therefore, it is concluded that the signs are visually similar to an average degree, at least.

Aurally, as the earlier mark is a position mark consisting of a purely figurative device that is affixed to the product in a certain manner, and the contested mark is a purely figurative sign, they are not subject to a phonetic assessment. Therefore, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a lightning bolt device, despite the pink colour of the contested sign, they are conceptually identical.

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

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).

As seen above, the goods and services concerned are partially identical or similar (to varying degrees) and partially dissimilar. The degree of attentiveness of the relevant public is average. The earlier mark is distinctive to a normal degree. The signs are visually similar to at least an average degree and conceptually identical whereas it is not possible to compare them aurally. Bearing in mind that the differences between the signs are confined to subtle and secondary aspects, and that average consumers rarely have the chance to make a direct comparison between different marks, and must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26) there is a likelihood of confusion.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In particular, in decision No B 2 869 363 the signs in conflict did not have a similar contour and the decision No 2 088 733 rejected the opposition due to lack of proof of genuine use of the mark.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (including the lowly similar ones) 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

Kieran HENEGHAN

María del Carmen COBOS PALOMO

Begoña URIARTE VALIENTE

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.