OPPOSITION No B 3 055 052

alpi Krawattenmode GmbH, Weyerhofstr. 71, 47803 Krefeld, Germany (opponent), represented by Patentanwälte Dr. Stark & Partner mbB, Moerser Str. 140, 47803 Krefeld, Germany (professional representative)

a g a i n s t

Denis Meneghin, Via Villanova 67/B, 31020 Sernaglia della Battaglia, Italy (applicant).

On 06/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 052 is upheld for all the contested goods.

2. European Union trade mark application No 17 852 121 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 17 852 121 for the figurative mark . The opposition is based on European Union trade mark registration No 72 819 for the word mark ‘alpi’. 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, especially neck ties, bow ties, collar protectors, kerchiefs, cummerbunds.

The contested goods are the following:

Class 25: Clothing; Footwear; Headgear; Waterproof clothing; Roll necks [clothing]; Casualwear; Thermally insulated clothing; Ladies' clothing; Weather resistant outer clothing; Golf clothing, other than gloves; Work clothes; Tennis wear; Menswear; Children's outerclothing; Outerclothing for boys; Cashmere clothing; Woolen clothing; Clothing for skiing; Triathlon clothing; Sportswear; Sports clothing [other than golf gloves]; Leisure suits; Bath robes; Neckwear; Rainwear; Gym suits; Children's wear; Functional underwear; Thermal underwear; Leotards; Stockings; Sweat-absorbent stockings; Men's socks; Socks for infants and toddlers; Socks; Sports socks; Footless socks; Thermal socks; Breeches for wear; Blouses; Tennis shirts; Casual shirts; Moisture-wicking sports shirts; Fabric belts [clothing]; Woollen tights; Tights; Knickers; Turtlenecks; Men's and women's jackets, coats, trousers, vests; Sports jackets; Warm-up jackets; Jackets being sports clothing; Down vests; Fingerless gloves; Gloves including those made of skin, hide or fur; Fleece tops; Warm-up tops; Sports jerseys and breeches for sports; Sweaters; Cycling tops; Puttees and gaiters; Snowboard mittens; Slips [underclothing]; Footless tights; Shorts; Ski trousers; Polo shirts; Neck scarves [mufflers]; Knee warmers [clothing]; Handwarmers [clothing]; Arm warmers [clothing]; Boot cuffs; Tops [clothing]; Snow suits.

An interpretation of the wording of the opponent’s list of goods is required to determine the scope of protection of these goods.

The term ‘especially’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Clothing is identically contained in both lists of goods.

The contested waterproof clothing; roll necks [clothing]; casualwear; thermally insulated clothing; ladies' clothing; weather resistant outer clothing; golf clothing, other than gloves; work clothes; tennis wear; menswear; children's outerclothing; outerclothing for boys; cashmere clothing; woolen clothing; clothing for skiing; triathlon clothing; sportswear; sports clothing [other than golf gloves]; leisure suits; bath robes; neckwear; rainwear; gym suits; children's wear; functional underwear; thermal underwear; leotards; stockings; sweat-absorbent stockings; men's socks; socks for infants and toddlers; socks; sports socks; footless socks; thermal socks; breeches for wear; blouses; tennis shirts; casual shirts; moisture-wicking sports shirts; fabric belts [clothing]; woollen tights; tights; knickers; turtlenecks; men's and women's jackets, coats, trousers, vests; sports jackets; warm-up jackets; jackets being sports clothing; down vests; fingerless gloves; gloves including those made of skin, hide or fur; fleece tops; warm-up tops; sports jerseys and breeches for sports; sweaters; cycling tops; snowboard mittens; slips [underclothing]; footless tights; shorts; ski trousers; polo shirts; neck scarves [mufflers]; knee warmers [clothing]; handwarmers [clothing]; arm warmers [clothing]; boot cuffs; tops [clothing]; snow suits are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear; headgear are similar to the opponent’s clothing, since they have the same general purpose. They can have the same producers and distribution channels and they target the same relevant public.

The contested puttees and gaiters fall under the category of ‘footwear’ and accordingly, they are also similar to the opponent’s clothing, since they have the same general purpose. They can have the same producers and distribution channels and they target the same relevant public.

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 are directed at the public at large.

The degree of attention is considered average.

c) The signs

alpi
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 word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is depicted in upper or lower case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

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 ‘alpi’ is meaningful in Italian as referring to the large mountain system in south-central Europe (in English, ‘The Alps’) and this factor would have an additional impact in the conceptual comparison of the signs, as it will be examined below. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non‑Italian speaking part of the public, such as the English‑speaking part of the public, as this is the scenario in which the signs show more similarities and is thus where a likelihood of confusion would be most likely to arise.

The earlier mark ‘alpi’ and the element ‘Alpik’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The figurative element of the contested sign represents some mountains on a black background. This element could be perceived as an indication that the goods in question are aimed to be used when practising mountain sports, for instance (e.g. thermally insulated clothing, resistant outer clothing clothing for skiing, jackets being sports clothing, snowboard mittens, snow suits, ski trousers, etc.) and, to that extent, this element is descriptive of the purpose of these goods. Whereas in relation to other relevant goods (e.g. ladies’ clothing, work clothes, tennis wear, bath robes, gym suits, etc.) this element has no direct relation to these goods and it is, therefore, distinctive to a normal degree. In any case, it must be recalled 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).

Furthermore, the verbal element ‘Alpik’ in the contested sign is placed at the beginning of the sign and it has a bigger size than the figurative element.

Visually and aurally, the signs coincide in the string of letters/phonemes ‘ALPI*’, which is the entirety of the earlier mark and most of the letters forming the verbal element in the contested sign, which only differs in its final letter/phoneme, ‘K’. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

From a visual perspective, although the signs also differ in the figurative element of the contested sign, it has a lower impact, as explained above, and it is secondary within the sign. The stylisation of the verbal element in the contested sign will be merely perceived as graphical means of bringing the verbal element to the attention of the public and therefore, its impact on the comparison of the signs will be limited.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element in the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, as the figurative element is descriptive in relation to some of the goods in question and, in any case, secondary within the sign, the impact of this conceptual difference is very limited as the attention of the relevant public will be attracted by the fanciful verbal element ‘Alpik’, which has no meaning.

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 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 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. 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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical and partly similar. They target the public at large with an average degree of attention. The earlier mark has a normal distinctiveness.

The signs are visually and aurally similar to a high degree. Indeed, the earlier word mark ‘alpi’ is totally included in the contested sign, with the sole addition of a final letter ‘K’. Furthermore, the verbal element is the leading element within the contested sign. The signs are not conceptually similar on account of the figurative element contained in the contested sign, however, as explained above, the impact of this conceptual difference is very limited.

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). This principle fully applies to the present case, in which the conflicting verbal elements, ‘ALPI’ and ‘ALPIK’, are meaningless for the relevant public and coincide in most of their letters placed in the same position.

Considering all the above, there is a likelihood of confusion on the part of the English‑speaking part of the public. 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 earlier trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Carlos MATEO PÉREZ

Marta GARCÍA COLLADO

Monika CISZEWSKA

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.