OPPOSITION No B 3 060 026

Joan Carles Tasies Martínez, Avinyó, nº 7 (tienda), 08002, Barcelona, Spain (opponent), represented by Salvador Saura Cuadrillero, C/Comte Borrell, nº 182, ent.º 6ª, 08015, Barcelona, Spain (professional representative)

a g a i n s t

Andrei Lagunov, Roopa 9-2b, 10136 Tallinn, Estonia, and Mart Sillaots, Kodu 17, 71015, Viljandi, Estonia (applicants), both represented by AAA Patendibüroo Oü, Tartu mnt 16, 10117, Tallinn, Estonia (professional representative).

On 10/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 026 is partially upheld, namely for the following contested goods and services:

Class 25: Clothing, including underwear; footwear; headgear.

Class 35: Retail and wholesale services relating to clothing including underwear, footwear, headgear, handbags, suitcases, shopping bags, umbrellas.

2. European Union trade mark application No 17 877 714 is rejected for all the above goods and services. It may proceed for the remaining 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 17 877 714 . The opposition is based on European Union trade mark registration No 15 460 223 ‘LA MA’. 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 and services

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

Class 25: Headgear; Clothing; Footwear; And parts and fittings for all the aforesaid goods, included in this class.

Class 35: Wholesaling and retailing in shops and via global computer networks of clothing, footwear, accessories, jewellery, furniture and tools.

Class 42: Design of fashion, jewellery, furniture and tools.

The contested goods and services are the following:

Class 25: Clothing, including underwear; footwear; headgear.

Class 35: Retail and wholesale services relating to clothing including underwear, footwear, headgear, handbags, suitcases, shopping bags, umbrellas; sales promotion; demonstration of products.

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

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

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 clothing, including underwear; footwear; headgear are identically included within the opponent’s goods in Class 25.

Contested services in Class 35

The contested retail and wholesale services relating to clothing including underwear, footwear refer to the same services, or include as broader categories, the opponent’s wholesaling and retailing in shops and via global computer networks of clothing, footwear. Therefore, they are identical.

The contested retail and wholesale services relating to headgear, handbags, suitcases, shopping bags, umbrellas are at least similar to the opponent’s wholesaling and retailing in shops and via global computer networks of clothing, footwear, accessories, jewellery, furniture and tools. The services at issue have the same nature since they are retail or wholesale services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

The retailing/wholesaling services of the opponent are not similar to sales promotion and demonstration of products. The purpose of the former is to bring goods together for consumers to make their choice conveniently among them whereas the purpose of the latter is to boost sales. These services are not rendered by the same companies or through the same distribution channels and are neither complementary nor in competition. The contested sales promotion and demonstration of products do not have relevant points of contact either with the opponent’s remaining goods and services.

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 relevant goods and services are directed at the public at large and at business customers with specific professional knowledge or expertise. The wholesale services in Class 35 of the contested mark are mainly addressed to a professional public, namely dealers and traders (see, by analogy, 21/03/2013, T-353/11, eventer Event Management Systems, EU:T:2013:147, § 37; 15/02/2016, R 363/2015-5, OTTOGREEN / OTTO (fig.), Decision on Opposition No B 2 910 480 page: 4 of 7 § 13), who pay an enhanced level of attention since business interests are concerned.

Therefore, the degree of attention may vary from average to high.

c) The signs

LA MA
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).

For most of the relevant public the verbal element ‘MA’ of the earlier mark will not convey any meaning although it is sometimes used colloquially by English-language speakers in Ireland and the United Kingdom as a synonym of “mother” (information extracted from Collins English Dictionary on 24/05/2019 https://www.collinsdictionary.com/dictionary/english/ma). In any event, this element does not bear a relation to the relevant goods and services and so enjoys normal distinctiveness.

The element ‘LA’, used, inter alia, in French, Spanish, and Italian, to denote the feminine definite article will be understood by most of the relevant public in the European Union as a definite article, and as a result it will have a merely ancillary role with respect to the element ‘MA’.

It follows that, with respect to the earlier sign, the verbal element ‘MA’ will be perceived as being the main indicator of commercial origin for the relevant public.

The contested sign is a figurative mark consisting of the verbal elements ‘MA’ and ‘Collection’, being depicted in a rather standard type face, above which appears a device element in the colour red.

The element ‘Collection’ of the contested sign will be understood by most of the relevant public in the European Union as, inter alia, a gathering of things, or a fashion designer’s new clothes designed for the next season (information extracted from Collins English Dictionary on 24/05/2019 at https://www.collinsdictionary.com/dictionary/english/collection). While in the European Union, ‘Collection’ is a dictionary word only in English and French, it will be widely understood also by non-English and non-French speakers given its close similarity to the corresponding word in other languages such as Italian (‘Collezione’) and Spanish (Colección). For most of the relevant public, therefore, the element ‘Collection’ is non-distinctive as it indicates that the goods at issue, and the goods subject to the retail services, are related to a particular designer and season.

For French-language speakers, the verbal combination ‘MA Collection’ will be perceived as meaning ‘my collection’ given that the word ‘ma’, placed before a noun in French, functions as a possessive determiner.

For the non-French speaking part of the public, the element ‘MA’ in the contested sign will not have any clear meaning and, taking into account its position within the sign (to the left of the non-distinctive element ‘Collection’) it will be perceived as forming the main indicator of commercial origin.

Given that the verbal combination ‘MA Collection’ has a clear meaning for French-language speakers, which distinguishes clearly the contested mark semantically from the earlier mark, the Opposition Division intends to exclude the French-language speaking part of the relevant public from the current assessment.

For part of the relevant public, the device element of the contested sign will be perceived as a purely abstract shape having no clear meaning. Another part will perceive the top part of the device element as forming the letter ‘M’ and some may also perceive the lower triangular shape as forming a capitalised letter ‘A’. For this part – which perceives the letter ‘M’, or the letters ‘M’ and ‘A’ - the device element may be viewed as alluding to the verbal element ‘MA’.

The device element will possess normal distinctiveness for the relevant goods and services irrespective of whether the letters ‘M’ and ‘A’ are perceived therein given that, as stated above, ‘MA’ is distinctive for such goods and services.

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). This is particularly the case for the part of the public which perceives the figurative element as a fanciful representation of the main indicator of origin ‘MA’.

There is no dominant element within either sign.

Visually, the signs coincide in the verbal element ‘MA’ and differ in the verbal element ‘LA’ of the earlier mark and the verbal element ‘Collection’ as well as the figurative element of the contested sign. For the reasons explained above, the elements of difference have reduced impact on the public and in the comparison whereas the common element ‘MA’ will be perceived as the main indicator of origin in both signs.

Taking all this into account, it is considered that the marks at issue are visually similar to an average degree.

Aurally, although the signs clearly differ in their lengths (two syllables vs. five syllables), the differences have less impact than the independent and distinctive common element ‘MA’ which the public will perceive as the main indicator of the commercial origin of the goods and service at issue in both signs.

The figurative element of the contested sign is not likely to be pronounced even by that part of the relevant public that may perceive that it consists of a highly-stylised version of the letters ‘M’ and ‘A’.

Taking the above into account, the marks are considered to be aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The common verbal element ‘MA’ will be associated with the meaning explained above for the English-speaking part of the relevant public. To that extent, the signs are conceptually similar to a low degree.

For the remaining public considered, as the article ‘LA’ of the earlier mark does not inherently convey a concept, only the contested sign contains a meaningful element (‘Collection’) which renders the signs conceptually not similar. However, the limited distinctiveness of the concept underlying that element must be weighed in the comparison. The public will not pay attention to that weak element and their attention will be focused on the meaningless distinctive elements.

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 as a whole has no meaning for any of the goods and services in question from the perspective of the public in the European Union. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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 signs at issue are visually and aurally similar to an average degree, and conceptually similar to a low degree for the part of the English-speaking public that perceives the common verbal element ‘MA’ as referring to ‘mother’. The marks are not conceptually similar for the remaining part of the relevant public. Nevertheless, the difference from the conceptual point of view lies in a non-distinctive element which will be paid less attention by the relevant public, as explained above.

The relevant goods are identical and the relevant services are partly identical, partly similar, and partly dissimilar. The earlier mark is distinctive to a normal degree and the relevant attention may vary from average to high.

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). 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).

While the coincidence in verbal elements relates only to the word ‘MA’, this element forms the main origin-indicating verbal part of both marks at issue. Furthermore, the verbal differences between the signs are confined to non-distinctive or secondary elements and aspects. Moreover, the figurative element of the contested sign will either be perceived as a purely abstract feature or as a highly-stylised form of the letters ‘M’ or of ‘M’ and ‘A’ thereby alluding to the common verbal element ‘MA’.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, given that the marks coincide with respect to their sole distinctive verbal element, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

That is particularly possible if account is taken of the fact that it is common in the clothing and fashion sector, which is relevant in the present case, for the same mark to be configured in various different ways according to the goods which it designates or to particular periods in time (20/07/2017, T-521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 70 and the case-law cited).

Considering all the above, the Opposition Division finds that the differences between the two signs are insufficient to override the overall similarity between them such that there is a likelihood of confusion on the part of the relevant public. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 15 460 223 ‘LA MA’.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark including in relation to the contested services directed at business professionals.

The rest of the contested services in Class 35 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 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

Catherine MEDINA

Kieran HENEGHAN

Boyana NAYDENOVA

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.