OPPOSITION No B 3 054 917

Ints It Is Not The Same, GmbH, Baarerstr. 98, 6302 Zug, Switzerland (opponent), represented by María del Carmen Llagostera Soto, Calle Muntaner, 200, Planta 5ª4ª, 08036 Barcelona, Spain (professional representative)

a g a i n s t

IDT S.p.a., Via Varallo n. 24, 10153 Torino, Italy (applicant), represented by Maurizio Ferro, Corso Francia n. 161, 10139 Torino, Italy (professional representative).

On 21/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 917 is upheld for all the contested goods.

2. European Union trade mark application No 17 870 704 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 17 870 704, ‘IT’S NOT’ (word mark). The opposition is based on European Union trade mark registration No 15 549 702, (figurative). The opponent invoked Article 8(1)(a), (b) and 8(5) 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 3: Essential oils and aromatic extracts; Aromatic oils; Aromatherapy oil; Oils for perfumes and scents; Essential oils; Ethereal essences and oils; Fumigating incenses (Kunko); Toiletries; Perfumery and fragrances; Oral hygiene preparations; Oils for toilet purposes; Massage oils and lotions; Impregnated cleaning pads impregnated with cosmetics; Cotton sticks for cosmetic purposes; Cotton balls for cosmetic purposes; Cosmetics; Cosmetics for personal use; Foot smoothing stones; Pumice stones for use on the body; Toiletries; Essential oils and aromatic extracts; Tailors' and cobblers' wax; Cosmetic kits; Soaps; Dentifrices; Perfumery; Boot cream; Boot cream; Shoe black [shoe polish].

Class 9: Sunglasses; Pouches for optical apparatus; Cases for spectacles and sunglasses; sleeves for sunglasses; Frames for sunglasses; strings for glasses; Sunglass cords; Chains for sunglasses; Children's eye glasses; Spectacles [optics]; Sports glasses; Smartglasses; Diving goggles; Swim goggles; Cell phone covers; Carriers adapted for mobile phones; Mobile telephone covers made of cloth or textile materials.

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewelry; Watches; Rings [jewellery, jewelry (Am)]; Bracelets; Rings [jewellery] made of precious metal; Rings [jewellery] made of non-precious metal; Paste jewellery [costume jewelry (Am)]; Bracelets; Brooches [jewelry]; Decorative brooches [jewellery]; Scarf clips being jewelry; Earrings; earrings of silver; Gold earrings; Drop earrings; Hoop earrings; Earrings; Earrings; Earrings; Pierced earrings; Earrings of precious metal; Gold plated earrings; Necklaces [jewellery, jewelry (Am)]; Jewellery rope chain for necklaces; Decorative articles [trinkets or jewellery] for personal use.

Class 18: Travelling handbags; Pouches; Haversacks; Coin purses, not of precious metal; Trunks and travelling bags; Luggage, bags, wallets and other carriers; Leather shoulder belts; Trunks [luggage]; Kori wicker trunks; Traveling trunks; Trunks and travelling bags; Wallets; Casual bags; Sling bags; Sport bags; Garment bags for travel made of leather; Bags for campers; Roll bags; All-purpose athletic bags; Weekend bags; Gym bags; Two-wheeled shopping bags; Shoe bags; Belt bags and hip bags; Pouches for holding make-up, keys and other personal items; Kit bags; Garment carriers; Book bags; Handbags; Gentlemen's handbags; Ladies' handbags; Small clutch purses; Purses, not of precious metal; Clutch bags; Evening handbags; Knitted bags, not of precious metals; Hiking bags; Wallets including card holders; Briefcases [leather goods]; School book bags; Leather credit card wallets; Clutches [purses]; Wallets of precious metal; Satchels; Keycases; Wallets for attachment to belts; Cosmetic cases sold empty; Luggage tags [leatherware]; Banknote holders; Covers of leather; Cases of imitation leather; Commutation-ticket holders; Travel garment covers; Key cases made of leather; Backpacks; Back frames for carrying children; Briefcases and attache cases; Cosmetic purses; Baby carriers worn on the body; Briefbags; Coin holders; Carriers for suits, shirts and dresses; Travelling sets; Travelling sets [leatherware]; Card cases [notecases]; Shoe bags.

Class 25: Coats; Blousons; Jackets [clothing]; Parkas; Cloaks; Blousons; Pelisses; Mackintoshes; Trousers; Trousers shorts; Skirts; Waist belts; Gowns; Sweaters; Jumpers (clothing); Cardigans; Pullovers; Sweat shirts; Shirts; Undershirts; Short-sleeved T-shirts; Polo shirts; Suits; Waistcoats; Bermuda shorts; Underwear; Tee-shirts; Leotards; Robes; Negligees; Underwear; Nighties; Pyjamas; Robes; Swimming costumes; Shawls; Sashes for wear; Neckties; Tights; Leg warmers; Scarves; Bandanas (mufflers); Stocking suspenders; Gloves of clothing; Mittens; Stockings; Socks; Footwear; Slippers; Boots; Espadrilles; Sandals; Booties; ballerinas; Sneakers; Flip-flops; Beach wraps; Pumps [footwear]; Casual footwear; Aqua shoes; Footwear [excluding orthopedic footwear]; Beach shoes; Infants' footwear; Footwear for men; Athletics shoes; Riding shoes; Non-slipping devices for footwear; Footwear not for sports; Hats; Toques [hats]; Small hats; Millinery; Fur hats; Fashion hats; Beach hats; Woolly hats; Bobble hats; Sports headgear [other than helmets]; Paper hats for use as clothing items; Caps [headwear]; Skull caps; Shower caps; Waterpolo caps; Ski hats; Nightcaps; Swimming caps; Sports caps and hats; Fezzes; Party hats [clothing].

The contested goods are the following:

Class 3: Aromatics [essential oils]; Aromatics for fragrances; Aromatics for perfumes; Perfumes; Perfumery and fragrances; Perfumery; Fragrances; Fragrance preparations; Natural perfumery; Synthetic perfumery; Cleaning and fragrancing preparations; Lavender water; Scented water; Eau de Cologne; Toilet water; Cosmetics; Make-up; Toiletries; Body cleaning and beauty care preparations; Cosmetic preparations for body care; Deodorants and antiperspirants; Cosmetic creams; Washing creams; Oils for cosmetic purposes; Oils for toilet purposes; Ethereal oils; Scented oils; Natural oils for perfumes; Oils for perfumes and scents; Cleansing lotions; Beauty lotions; Lotions for cosmetic purposes; Perfumed lotions [toilet preparations]; Soap products; Soap; Cakes of toilet soap; Soaps and gels; Bath foam; Shampoos; Balms, other than for medical purposes; Lipsticks; Nail varnish; Pre-moistened cosmetic wipes; Body emulsions; Aromatherapy preparations; Air fragrancing preparations; Scented body spray; Talcum powder, for toilet use.

Class 9: Earbuds; Telephone earpieces; Headsets; Telephone headsets; Stereo headphones; Covers for smartphones; Covers for tablet computers; Covers for personal digital assistants [PDAs]; Cell phone covers; Covers for data storage devices; Covers for portable media players; Protective films adapted for smartphones; Phone covers [specifically adapted]; Optical apparatus and instruments; Contact lenses; Correcting lenses [optics]; Ophthalmic lenses; Spectacle lenses; Spectacles; Spectacle frames; Prescription eyeglasses; Sunglasses; Goggles for sports; Spectacle cases; Covers for glasses; Containers for contact lenses.

Class 14: Time instruments; Clocks; Chronographs [watches]; Paste jewellery; Jewellery; Cases for clock- and watchmaking; Imitation jewellery ornaments; Ornaments [jewellery, jewelry (Am)]; Jewellery boxes and watch boxes; Key rings.

Class 18: Suitcases; Key cases; Cosmetic purses; Bags; Luggage; Trunks [luggage]; Vanity cases, not fitted; Purses; Handbags; Overnight bags; School bags; Travel cases; Credit-card holders; Carrying cases for documents; Carriers for suits, shirts and dresses; Bumbags; Umbrellas; Clutches [purses]; Business card cases; Briefcases and attache cases; Banknote holders; Haversacks; Travelling sets; Shoulder belts; Pocket wallets; Daypacks; Rucksacks.

Class 25: Clothing; Dresses; Underwear; Footwear; Stockings; Breeches for wear; Shirts; Headgear; Casual jackets; Waist belts; Chemises; Suits; Cravats; Sweat shirts; Jackets [clothing]; Cagoules; Overcoats; Stuff jackets [clothing]; Blousons; Skirts; Gloves [clothing]; Raincoats; Denim jeans; Jerseys [clothing]; Hosiery; Undershirts; Sweaters; Trousers shorts; Trousers; Ear muffs [clothing]; Pelisses; Pyjamas; Ready-made clothing; Shoes; Tee-shirts; Skirt suits; Combinations [clothing]; Uniforms.

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 3

All of the contested goods in this class are identical to the opponent’s goods in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods in this class include, are included in, or overlap with, the opponent’s, for example, with its essential oils and aromatic extracts; toiletries; perfumery and fragrances; cosmetics; cosmetics for personal use.

Contested goods in Class 9

The contested sunglasses; cell phone covers; goggles for sports are identical to the opponent’s goods in the same class, because they are identically contained in both lists (including synonyms).

The covers for smartphones; phone covers [specifically adapted] are included in, or overlap with, the opponent’s cell phone covers. They are identical.

The contested spectacles are included in, or overlap with, the opponent’s sunglasses. They are identical.

The contested spectacle frames include, as a broader category, the earlier frames for sunglasses. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested optical apparatus and instruments include, as a broader category, the earlier sunglasses. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested ophthalmic lenses; correcting lenses [optics]; spectacle lenses; contact lenses; prescription eyeglasses are similar to the earlier sunglasses. They have the same purpose and coincide in distribution channels, end users and in producer.

The contested spectacle cases; covers for glasses; containers for contact lenses are similar to the earlier spectacles [optics], because they are complementary and they coincide in distribution channels, end users and producers.

The contested covers for data storage devices; covers for portable media players; protective films adapted for smartphones; covers for tablet computers; covers for personal digital assistants [PDAs] are similar to the opponent’s cell phone covers in as much as they are all protective devices with the same purpose. They target the same public and they are complementary to each other. They are produced by the same undertakings and sold under the same distribution channels.

The contested earbuds; telephone earpieces; headsets; telephone headsets; stereo headphones are similar to carriers adapted for mobile phones in as much as they all are point to point communication equipment and audio/visual devices generally sold in the same retail outlets. They target the same public and they are complementary to each other.

Contested goods in Class 14

All the contested goods can be divided in categories of goods belonging to the market sector of time instruments and jewelry.

The opponent’s goods cover products belonging to the same sector of time instruments and jewellery, including jewellery decorative articles. Even if it cannot be excluded that some of the goods under comparison would coincide in numerous relevant criteria or be even identical, all of them clearly belong to one homogeneous sector of products on the market and for the majority of them they are - at least - produced by the same companies, target the same end user and are being sold through the same channels of distribution. Based on this conclusion, none of the contested goods can be considered dissimilar to the opponent’s goods.

It follows, therefore, that all the contested goods are at least similar to a low degree to the opponent’s goods.

Contested goods in Class 18

All the contested goods (except umbrellas) can be divided in categories of goods belonging to the market sector of luggage, bags, wallets and other carriers.

The opponent’s goods also cover products belonging to the same sector of luggage, bags, wallets and other carriers. Even if it cannot be excluded that some of the goods under comparison would coincide in numerous relevant criteria or be even identical, all of them clearly belong to one homogeneous sector of products on the market and for the majority of them they are - at least - produced by the same companies, target the same end user and are being sold through the same channels of distribution. Based on this conclusion, none of the contested goods can be considered dissimilar to the opponent’s goods.

It follows, therefore, that all the contested goods are at least similar to a low degree to the opponent’s goods.

The contested umbrellas are similar to the opponent’s covers of leather. In the absence of any further specification, the Opposition Division understands that, for example, umbrella covers are included in the opponent’s goods. As such, these usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

Contested goods in Class 25

The contested footwear; headgear; shoesare identical to the opponent’s goods in the same class, either because they are identically contained in both lists or because the applicant’s goods include or are included inthe opponent’s goods.

The contested clothing; ready-made clothing include the opponent’s articles of clothing, such as coats, blousons, jackets, cardigans, etc. They are identical.

The rest of the contested goods in this class are articles of clothing, namely dresses; underwear; stockings; breeches for wear; shirts; casual jackets; waist belts; chemises; suits; cravats; sweat shirts; jackets [clothing]; cagoules; overcoats; stuff jackets [clothing]; blousons; skirts; gloves [clothing]; raincoats; denim jeans; jerseys [clothing]; hosiery; undershirts; sweaters; trousers shorts; trousers; ear muffs [clothing]; pelisses; pyjamas; tee-shirts; skirt suits; combinations [clothing]; uniforms. Even if it cannot be excluded that some of the goods under comparison would coincide in numerous relevant criteria or be even identical, all of them clearly belong to one homogeneous sector of products on the market and for the majority of them they are - at least - produced by the same companies, target the same end user and are being sold through the same channels of distribution. Based on this conclusion, none of the contested goods can be considered dissimilar to the opponent’s goods.

It follows, therefore, that all the contested goods are at least similar to a low degree to the opponent’s goods.

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 may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

In its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of Class 14 goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may then be assumed.

c) The signs

	IT’S NOT.
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 will focus on the English-speaking part of the public, because the signs at issue are meaningful in English and the Opposition Division considers that this increases the likelihood of confusion between the signs.

The earlier mark is a figurative mark consisting of the verbal element ‘it’snothesame’, written in a white bold fairly standard lowercase typeface, against a black rectangle. ‘It’ is used to refer to a situation, fact, or experience, among others; and ‘not the same’ will be perceived as ‘not being identical’.

The contested sign is a word mark consisting of the elements ‘IT’S NOT.’, which will be understood as the negation of a situation, fact, or experience. It has no meaning in relation to the goods at issue and, therefore, its distinctiveness is average.

Visually, the signs coincide in the letters/elements ‘IT’S NOT’, although this element is stylised and written jointly in the earlier mark. However, its typeface is fairly standard and will not divert the consumer’s attention from the letters it embellishes. The coinciding element has a normal degree of distinctiveness. The signs differ in the black rectangle and ‘the same’ at the end of the earlier mark versus a dot at the end of the contested sign.

As regards the earlier mark’s figurative element and the typeface, 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 black rectangular frame is merely of a decorative nature and has little impact.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘IT’S NOT’. The pronunciation differs in the sound of the ending ‘the same’ of the earlier mark.

Therefore, the signs are phonetically similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the similar meaning to the extent that they share the notion of a negation of a situation of fact, of something not being identical, different, the signs are conceptually similar to an average degree.

As the signs have been found similar in all aspects 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 claimed that the earlier trade mark enjoys an enhanced distinctiveness, but did not file any evidence in order to prove such a claim.

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 are partially identical and partially similar (to various degrees) and target the public at large, whose degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

The signs have been found to be similar to the extent that they share the element ‘IT’S NOT’, which is a distinctive element of the marks. The signs are visually, aurally and conceptually similar to an average degree.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers with a high degree of attention…

The visual, aural and conceptual similarities of the signs and the identity and similarities (to varying degrees) of the goods are, in the case at issue, such as to induce the consumers to associate both signs as to their coinciding commercial origin. The differentiating graphic elements are due to their commonplace character and not able to contribute significantly to distinguishing the signs.

Therefore, the Opposition Division concludes that the consumer is likely to confuse the marks including the possibility that the consumer will perceive the contested sign as a special line originating from the undertaking which is the proprietor of the earlier mark in relation to identical and similar (to varying degrees) goods or vice versa.

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 well founded on the basis of the opponent’s European Union trade mark registration No 15 549 702. 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 all the contested goods, including those found similar to a low degree. Indeed, in view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, or vice versa, the similarity of the signs offsets the lower degree of similarity between some of the goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a)and 8(5) EUTMR.

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, 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

Chantal VAN RIEL

Inés GARCIA LLEDO

Alicia BLAYA ALGARRA

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.