OPPOSITION No B 3 055 545

CBM Creative Brands Marken GmbH, Kalandergasse 4, 8045 Zürich, Switzerland (opponent), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Luca Nieddu, Via Avogadro di Collobiano 35, 09131 Cagliari, Italy (applicant), represented by Niccolo Scardaccione, Viale Majno 9, 20122 Milano, Italy (professional representative).

On 05/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 545 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 865 215 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 and services of European Union trade mark application No 17 865 215 for the figurative sign . The opposition is based on, inter alia, European Union trade mark registration No 17 651 456 for the word mark ‘EQUAL’. 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.

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 17 651 456 as it is the one that has more similarities with the contested sign.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions; retailing, including via websites and teleshopping, in relation to clothing, footwear, headgear, bleaching preparations and; other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, sunglasses, precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and; bandoliers, leather and imitations of leather, animal skins and hides and goods made therefrom, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather thongs, leather laces, bandoliers, sheets of imitation leather for further processing, clothing accessories, textile goods, haberdashery, bed and table linen, sports equipment, bags, forks, spoons, household or kitchen utensils and containers, glassware, porcelain and; earthware, products from the gastronomy sector (namely confectionery, coffee, smokers' accessories, alcoholic beverages), drinks, spectacles and sunglasses and accessories therefor, games, toys, fixtures, sound recordings and data storage apparatus, electric and electronic household goods, electric and electronic cosmetic goods, home appliances, electric utensils for; household, electrical cosmetic apparatus, lighting installations, heating apparatus, fans, tools, diy products and gardening tools; arranging and conducting of advertising events and customer loyalty programmes.

The contested goods and services are the following:

Class 25: Clothing.

Class 35: Retail services connected with the sale of clothing and clothing accessories; sales promotion; commercial information and advice for consumers [consumer advice shop]; services with regard to product presentation to the public; presentation of goods on communication media, for retail purposes; business administration; business management for shops; business management.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services 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).

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

Contested services in Class 35

Business management; retail services connected with the sale of clothing and clothing accessories; business administration are identically contained in both lists of services (including synonyms).

The contested sales promotion; services with regard to product presentation to the public; presentation of goods on communication media, for retail purposes are all included in the opponent’s broader category of the opponent´s advertising. Therefore, they are identical.

The contested business management for shops is included in the opponent´s broader category of business management. Therefore, they are identical.

The contested commercial information and advice for consumers [consumer advice shop] is similar to low degree to the opponent’s advertising as they share the same purpose and the same relevant public.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average (for goods in Class 25) to high (for certain services in Class 35 that may have direct impact on the successful positioning on a market of an undertaking).

3. The signs

EQUAL
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.

As both marks include English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as United Kingdom, Malta and Ireland.

For this part of the public, ‘EQUAL’ included in both marks, means ‘identical in size, quality, degree, intensity etc; the same size (as)’ information extracted from Collins English Dictionary at https://www.collinsdictionary.com/us/dictionary/english/equalAs this meaning has no direct relation with the goods and services concerned, it is distinctive to an average degree.

In the contested sign, the inverted letter ‘L’ and the letter ‘E’ are depicted in white upper case letters against a banal black background. By reading the words placed just below the letters, that consumers will understand that the letters are a stylised representation of the initial letter of the words ‘LIGHT EQUAL’.

The Opposition Division notes that, notwithstanding the position that these letters occupy in the contested sign, and their normal distinctiveness on account of them not having a direct meaning in relation to the goods in question, in the perception of the relevant public these letters will be given a lesser trade mark significance than the sign’s verbal components.

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). In the present case, the role of the figurative element is to emphasise the beginning of the contested sign’s verbal components. When encountering the contested sign, consumers will perceive it as an embellishment that is ancillary to the words ‘LIGHT EQUAL’.

As far as ‘LIGHT’ is concerned, it will be perceived by the relevant public, inter alia, as ‘the brightness that lets you see things’ or ‘something that weighs less than you would expect it to’ (information extracted from Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/light). The element ‘LIGHT’ is of average distinctiveness in relation to the relevant goods and services, as it has no connection with them or their essential characteristics.

Visually, the signs coincide in the presence of the word ‘EQUAL’ that constitutes the entire earlier mark and is completely integrated in the contested sign. However, the signs differ in the additional word ‘LIGHT’, in the presence of the initial letters ‘LE’ and the figurative aspects of the contested sign.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word /EQUAL/ present identically in both signs. However, the signs differ in the sound of the word /LIGHT/ present in the contested sign and with no counterpart in the earlier mark.

As it is conceivable to think that the letters ‘LE’ will not be pronounced, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the meaning conveyed by the word ‘EQUAL’, the signs are conceptually similar to an average degree.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as average.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 16).

In the present case, the goods and services have been found to be partly identical and partly similar to a low degree and they are directed to both the general and the professional public whose degree of attention ranges from average to high.

The earlier mark has an average degree of distinctiveness.

The signs are similar to an average degree from the aural and conceptual perspective while visually they are similar to a below average degree on account of some differentiating elements in the contested sign. Those, however, have less importance in the comparison because they merely represent the initial letters of the words ‘LIGHT EQUAL’. Moreover, the additional word ‘LIGHT’, although distinctive for the relevant goods and services, does not contribute sufficiently to the differentiation of the marks. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

This is all the more true if we take 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

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 European Union trade mark registration No 17 651 456 .It follows that the contested trade mark must be rejected for all the contested goods and services.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

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

Klaudia MISZTAL

Alexandra APOSTOLAKIS

Helen Louise MOSBACK

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.