OPPOSITION No B 3 061 302

Sik Makas Giyim Sanayi Ve Ticaret Anonim Sirketi (TR), Evren Mah. Gülbahar Cad. Gültepe Sk. No.7 Günesli, 34540 Istanbul, Turkey (opponent), represented by Pfenning, Meinig & Partner mbB, Joachimsthaler Str. 10-12, 10719 Berlin, Germany (professional representative)

a g a i n s t

Agnieszka Makarowska, Grabowska 19, 62-570 Rychwał, Poland (applicant), represented by Agnieszka Plucińska, ul. Maratońska 33/52, 94-102 Łódź, Poland (professional representative).

On 11/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 302 is upheld for all the contested goods and services, namely:

Class 25: Waterproof aprons; Waders; Clothing for fishermen; Waterproof bib overalls; Chest waders.

Class 35: Retail services in relation to clothing accessories; Online retail store services relating to clothing; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to headgear; Retail services in relation to clothing; Online retail services relating to clothing; Wholesale services in relation to clothing; Mail order retail services for clothing; Retail store services in the field of clothing; all of the above mentioned services are limited to fishing and fishing equipment and excludes footwear.

2. European Union trade mark application No 17 870 811 is rejected for all the above goods and services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 870 811 (figurative mark) namely against all the goods in Class 25 and some of the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 3 751 691 ‘CROSS JEANS’ (word 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.

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 3 751 691 ‘CROSS JEANS’.

1. The goods and services

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

Class 25: Denim clothing, sportswear, belts, shoes, footwear (included in Class 25), headgear.

The contested goods and services are, after a limitation, the following:

Class 25: Waterproof aprons; Waders; Clothing for fishermen; Waterproof bib overalls; Chest waders.

Class 35: Retail services in relation to clothing accessories; Online retail store services relating to clothing; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to headgear; Retail services in relation to clothing; Online retail services relating to clothing; Wholesale services in relation to clothing; Mail order retail services for clothing; Retail store services in the field of clothing; all of the above mentioned services are limited to fishing and fishing equipment and excludes footwear.

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 25

The contested waders; clothing for fishermen; waterproof aprons; waterproof bib overalls; chest waders are at least similar to the opponent’s goods because they coincide in method of use (aprons and clothing) as well as in end user, distribution channels and producer.

Contested services in Class 35

It is noted as regards the contested services in that class, which consist of retail and wholesale services, that 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. Besides it is noted that the applicant’s restriction all of the above mentioned services are limited to fishing and fishing equipment and excludes footwear does not affect the similarity between these services and the opponent’s goods, as these could also be used for fishing / qualify as fishing (clothing) equipment.

In view of the above, it is considered that the contested retail services in relation to clothing accessories; online retail store services relating to clothing; retail services connected with the sale of clothing and clothing accessories; retail services in relation to headgear; retail services in relation to clothing; online retail services relating to clothing; wholesale services in relation to clothing; mail order retail services for clothing; retail store services in the field of clothing; all of the above mentioned services are limited to fishing and fishing equipment and excludes footwear are similar to a low degree to the opponent’s denim clothing, belts, headgear because they are complementary, they coincide in distribution channels and in end user.

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 similar to varying degrees are directed at the public at large as well as to professionals in the clothing sector. While the degree of attention of the non-professionals will be average, the professional public is likely to pay a higher degree of attention.

3. The signs

CROSS JEANS
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 consisting of two elements ‘CROSS’ and ‘JEANS’.

The element ‘CROSS’ refers in English to, inter alia, a shape that consists of a vertical line or piece with a shorter horizontal line or piece across it. Since it has no exact meaning in relation to the goods in question, it is distinctive, as the opponent rightly argues. Moreover, this word will not be understood by the non-English speaking consumers and as such it is also distinctive.

The element ‘JEANS’ which is in widespread use in the fashion sector designates the cotton fabric known as ‘denim’ which will be understood as such by the relevant public. As it is descriptive of the (combined) material of which the denim clothing, sportswear, belts, shoes, footwear (included in class 25), headgear for which the earlier mark is registered are or could be made (18/05/2016, R 1777/2015-2, JEANS ONLY (fig.) / ONLY, § 33; 10/11/2011, R 1022/2010-2 AMICIJEANS (fig.) / AMICHI (fig.) and others, § 19; 14/09/2000, R 0153/2000-1, ONLY JEANS WEAR, § 12; and, by analogy, 13/07/2004, T‑115/03, Gas Station, EU:T:2004:236, § 34), it lacks any distinctive character in relation to these goods.

It follows from the above that ‘CROSS’ is the most distinctive element of the earlier mark.

The contested sign is a figurative mark consisting of a single word element ‘CROS’, which has no meaning in any of the languages in the relevant territory and which, therefore, is distinctive. It is depicted in a light green typeface and the letter ‘O’ is slightly stylised, on the left side of the sign there is a simple figurative device consisting of two intertwined lines depicted in the same colour.

The contested sign’s graphical aspects and elements are rather simple and standard and they play a decorative role. Hence, they have a weak distinctive character and the word ‘CROS’ is the most distinctive element of the contested sign. The contested sign does not have any element that could be considered more dominant than the other.

Visually, the signs coincide in the string of letters ‘CROS’ which constitutes the whole verbal element of the contested sign and the beginning of the earlier mark’s sole distinctive element.

However, they differ in the last letter ‘S’ of the earlier mark’s first element and its second element ‘JEANS’ as well as in the graphical aspects of the contested sign, including its typeface, colour, and figurative element, none of which has any counterpart in the other sign.

Bearing in mind what has been said above regarding the distinctiveness of the differing element ‘JEANS’ and of the contested sign’s graphical aspects and considering the position of the additional letter ‘S’ of the earlier mark in the end of the first element, that is, in a position that does not attract much the attention, it is considered that the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘CROS’ present identically in both signs. It might differ, at least for part of the public in the sound of the last letter ‘S’ in the earlier mark’s first word element ‘S’ where the repetition of that letter introduces an aural difference (for example, in accordance with French pronunciation rules) and the pronunciation differs for the whole public in the second word ‘JEANS’ of the earlier mark, having no counterpart in the contested sign.

Bearing in mind that the element ‘JEANS’ of the earlier mark will not be given any trade mark significance and that the earlier mark’s element ‘CROSS’ and the contested sign’s element ‘CROS’, are distinctive and pronounced in a very similar or identical fashion, the signs are aurally similar to at least a high degree.

Conceptually reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the English-speaking public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the contested sign will not convey any concept to the relevant public, including the English-speaking part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for the English-speaking public.

Moreover, it is noted that for the part of the part of the public that does not speak English, since the element ‘JEANS’ of the earlier mark will not be given any trade mark significance, it has no influence on the comparison of the signs from the conceptual point of view. As the attention of the part of the public that does not speak English will be attracted by the verbal elements ‘CROSS’ and ‘CROS’, which will be perceived as fanciful, a conceptual comparison is not possible for this part of the public and the conceptual aspect does not influence the assessment of the similarity of the signs.

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, despite the presence of the descriptive and hence, non‑distinctive element ‘JEANS’ in the mark, as stated above in section c) of this decision.

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).

In the present case, the contested goods are at least similar and the contested services are similar to a low degree to the opponent’s goods. The earlier mark enjoys an average degree of distinctiveness and the signs have been found to be visually similar to an average degree, phonetically similar to at least a high degree and conceptually are either not similar or the comparison neutral.

Taking into account all the above and in particular the fact that the earlier mark’s sole distinctive element ‘CROSS’ is almost entirely reproduced in the contested sign which only differs in this element in so far it does not include the last letter ‘S’ and considering that said difference is likely to be overlooked by the relevant non-English speaking public for which these words are fanciful, it has to be concluded that there is a risk that the signs under consideration will be confused by the public at large.

As 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), it is indeed considered highly conceivable that the non-professional consumer displaying an average degree of attention overlook this difference and hence confuse the signs.

Moreover, in view of their lack of distinctiveness and/or their secondary role, the other differing elements are not capable of dispelling a likelihood of confusion between the marks in question.

Indeed, the element ‘JEANS’ will not be given any trade mark significance. Moreover, the stylisation of the contested sign alone, including its figurative element cannot counteract the visual and aural similarities between the signs provided by the coincidence in the string of letters ‘CROS’, and as such they cannot serve to exclude a likelihood of confusion in the context of goods and services which are similar, even to a low degree.

Therefore, there is a likelihood of confusion, at least, on the part of the public that does not speak English.

In that connection, it shall be borne in mind that 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.

It follows that the contested trade mark must be rejected for all the contested goods and services that have been considered similar, even to a low degree, to the opponent’s goods. Considering that the earlier mark is distinctive to an average degree, that the signs are visually similar to an average degree at least and aurally highly similar, the low degree of similarity between the contested services and the opponent’s goods is considered compensated by other factors.

As the opposition based on the earlier European Union trade mark registration No 3 751 691 leads to the success of the opposition in its entirety and to the rejection of the contested trade mark for all of 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. 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 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

Nicole CLARKE

Marine DARTEYRE

Loreto URRACA LUQUE

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.