OPPOSITION No B 3 056 721

Şık 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

Swiss Army Knife Limited, 12/F., San Toi Building, 137-139, Connaught Road Central, Hong Kong, Peoples Republic of China (applicant) represented by Asin Faith, 55 rue Ramey, 75018 Paris, France (professional representative).

On 17/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 721 is partially upheld, namely for the following contested goods:

Class 18: School bags; Travelling trunks; Backpacks; Handbags; Pouch baby carriers; Pocket wallets.

Class 25: Shoes; Clothing; Infants' clothing; Clothing for sports; Articles of sports clothing; Gloves; Scarfs; Hosiery; Underpants; Underwear; Belts made from imitation leather; Belts for clothing.

2. European Union trade mark application No 17 879 619 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 879 619 for the word mark 'CROSSGEAR'. The opposition is based on, inter alia, European Union trade mark registration No 201 301 for the figurative 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 201 301.

a) The goods

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

Class 18: Bags.

Class 25: Denim clothing and sportswear, except shirts and singlets of knitwear; belts, shoes, namely denim footwear and sports shoes; headgear.

The contested goods are the following:

Class 18: School bags; Travelling trunks; Backpacks; Handbags; Umbrella or parasol ribs; Alpenstocks; Pouch baby carriers; Pocket wallets; Furniture coverings of leather; Pet clothing.

Class 25: Shoes; Clothing; Infants' clothing; Clothing for sports; Articles of sports clothing; Gloves; Scarfs; Hosiery; Underpants; Underwear; Belts made from imitation leather; Belts for clothing.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 18

The contested school bags; handbags; backpacks are included in the broad category of the opponent’s bags. Therefore, they are identical.

The contested pouch baby carriers are synonymous to baby carrying bags which are included in the opponent’s broad category of bags. Therefore, they are identical.

The contested travelling trunks are similar to a high degree to the opponent’s bags as they have the same nature, purpose and method of use. Furthermore, they target the same relevant public and usually coincide in producers and distribution channels.

The contested pocket wallets are similar to a low degree to the opponent’s bags since they can coincide in producers, relevant public and distribution channels.

The contested pet clothing concerns items of clothing for animals. These goods are considered to be dissimilar to the opponent's goods in Classes 18 and 25, which are intended to carry things (bags) or which concern items to dress the human body and feet. Even if clothing for pets in Class 18 and clothing in Class 25 can have the same nature, the opponent's goods are all for humans, while the contested goods are for animals. The goods under comparison are aimed at different end users and are not complementary to each other or in competition. Furthermore, they do not have the same distribution channels and are not made by the same producers.

The contested umbrella or parasol ribs are parts belonging to goods for protection from the sun or the rain. The contested furniture coverings of leather are goods used to protect furniture from spills, stains etc. These goods are also considered to be dissimilar to all the opponent's goods in Classes 18 and 25 since they differ in nature, purpose and producers. Moreover, they target a different public through different distribution channels. Finally, they are neither in competition with nor complementary to each other.

The contested alpenstocks are long iron-pointed staves used in mountain climbing and have a very specific nature and purpose which are very different from those of the opponent’s goods in Classes 18 and 25 (assistance with walking versus carrying things or covering/protecting the human body).They do not usually originate from the same producer, they are not complementary nor in competition with each other and do not have the same distribution channels. These goods are, therefore, dissimilar.

Contested goods in Class 25

The contested shoes include, as a broader category, the opponent’s shoes, namely denim footwear and sports shoes. 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 hosiery; gloves overlap with the opponent’s sportswear, except shirts and singlets of knitwear. Therefore, they are identical.

The contested clothing includes, as a broader category, the opponent’s denim clothing and sportswear, except shirts and singlets of knitwear. 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 infants' clothing; scarfs; underpants; underwear overlap with the opponent’s denim clothing, except shirts and singlets of knitwear. Therefore, they are identical.

The contested clothing for sports; articles of sports clothing overlap with the opponent’s sportswear, except shirts and singlets of knitwear. Therefore, they are identical.

The contested belts for clothing; belts made from imitation leather are identically covered by, or included in, the broad category of the opponent’s belts. Therefore, they are identical.

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 various degrees are directed at the public at large.

The degree of attention is average.

c) The signs

	CROSSGEAR
Earlier trade mark	Contested sign

The relevant territory is 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.

The marks under comparison consist of elements that are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the relevant territory.

As regards the verbal element of the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In this respect, the word ‘CROSS’ refers, inter alia, to 'a shape that consists of a vertical line or piece with a shorter horizontal line or piece across it' (information extracted from Collins English Dictionary at www.collinsdictionary.com/dictionary/english/cross_1 on 08/05/2019). Since it has no exact meaning in relation to the goods in question, the element ‘CROSS’ is distinctive.

The word ‘GEAR’ means, inter alia, 'clothing' and 'equipment and supplies for a particular operation, sport, etc', e.g. running, hiking, fishing or travelling, etc. (information extracted from Collins English Dictionary at www.collinsdictionary.com/dictionary/english/gear on 08/05/2019). Consequently, in relation to the goods concerned in Classes 18 and 25, the element ‘GEAR’ of the contested sign will be perceived by the relevant public under analysis merely as a reference either to clothing or equipment and supplies and it is, therefore, non-distinctive.

The earlier mark is a figurative mark consisting of the verbal element ‘CROSS’ depicted inside a rhombus, placed above the verbal element ‘JEANSWEAR COMPANY’. The rhombus is of weak distinctive character as it is of a purely decorative nature.

The verbal element ‘CROSS’ is stylised to the extent that the letters are depicted in slightly different sizes. However, the slight stylisation of this element will not detract consumers’ attention away from the verbal element as such. In this respect, the above considerations regarding the perception and the distinctiveness of the word ‘CROSS’ in the contested sign apply equally to this element of the earlier mark.

All the verbal elements are depicted in bold slightly standard upper case-letters. The much smaller verbal element ‘JEANSWEAR COMPANY’ will be perceived as a merely informative message indicating that the goods concerned originate from a commercial business that is active in the field of denimwear. Therefore, this verbal element of the earlier mark is non-distinctive for the part of the public under analysis.

It follows from the above that the verbal element ‘CROSS’ is the most distinctive element and also, due to its size and position, the dominant (visually most eye-catching) element of the earlier mark.

Visually, the signs coincide in the distinctive word ‘CROSS’ and its slight stylisation in the earlier mark will have little impact on consumers as explained above. They differ in the additional word ‘GEAR’ of the contested sign, which is however non-distinctive, and in the weakly distinctive figurative element and the non-distinctive verbal element ‘JEANSWEAR COMPANY’ of the earlier mark.

Bearing in mind what has been said above regarding the distinctive and dominant elements of the signs, it is considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‘CROSS’ and only differ in the additional sound of the non-distinctive word ‘GEAR’ in the contested sign. As regards the earlier mark, taking into account that the verbal element ‘JEANSWEAR COMPANY’ is non-distinctive, is of smaller size and it’s position in the earlier mark, and bearing in mind that consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T-477/10, SEⓒSports Equipment, EU:T:2011:707, § 55; 09/04/2013, T-337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLRG5 (fig.) / Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 et al., EU:T:2016:571, § 56), the relevant public under analysis would generally be likely to pronounce only the verbal element ‘CROSS’ when referring to the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, both signs will be associated with the same distinctive concept of a 'cross' as explained above. In view of this and bearing in mind that the additional concepts conveyed by the respective marks are non-distinctive and weak as also explained above, the signs are conceptually highly similar.

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.

According to the opponent, the earlier mark has acquired a substantial goodwill and reputation through extensive use and it has therefore gained an enhanced distinctiveness. However, the opponent did not file any evidence in order to prove these claims.

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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive and weak elements in the mark, as stated above in section c) of this decision.

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).

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.

In the present case, the contested goods have been found partly identical or similar to various degrees and partly dissimilar to the opponent’s goods. The degree of attention of the relevant public is average.

The earlier mark has a normal distinctiveness as a whole and the signs have been found visually similar to an average degree, aurally highly similar and conceptually highly similar as well on account of their coincidence in the distinctive word 'CROSS'.

Since the differences between the signs are confined to weak and non-distinctive elements, The Opposition Division finds that the degree of similarity between the marks is sufficient for it to be concluded that the relevant public under analysis may reasonably believe that the goods found to be identical or similar to various degrees originate from the same undertaking or economically linked undertakings.

Indeed, 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public in the relevant territory. 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 partly well founded on the basis of the opponent’s European Union trade mark registration No 201 301. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 3 751 691 for the word mark 'CROSS JEANS' covering denim clothing, sportswear, belts, shoes, footwear (included in class 25), headgear in Class 25;

 European Union trade mark registration No 4 132 023 for the figurative mark covering clothing, denim clothing, sportswear, shoes, footwear (included in class 25), belts, headgear, accessories for the aforesaid goods in Class 25; and

 International trade mark registration No 965 087 designating the European Union for the figurative mark covering clothing namely pullovers; skirts; dresses; blouses; jeans; trousers; jackets; coats, raincoats, anoraks; sportswear, namely shirts, shorts, pants and jackets; shirts; T-shirts; sweatshirts; beach clothes, namely, bathing suits and beach cover-ups; shorts; knitwear, namely shirts, shorts, sweaters and scarves; overalls; underclothing; bodices; brassieres; camisoles; underpants; dressing gowns; bath robes; bathing suits; pyjamas; gloves (clothing); ski suits; headgear namely hats, caps, knitted caps, berets; footwear namely shoes excluding orthopaedic shoes, slippers, boots, sandals, beach shoes, sports shoes, lace boots and parts thereof; shoe parts namely heelpieces; heels; footwear uppers; stockings; belts (clothing); ties; neckties; shawls; scarves; mufflers; neck scarves; sarongs; collars for dresses; maniples; muffs; suspenders; braces for clothing; garters; bandanas; headbands; clothing for babies, namely babies' diapers of textile in Class 25.

These other earlier rights invoked by the opponent cover the same or a narrower scope of goods. Therefore (irrespective of whether or not the international trade mark registration No 965 087 is substantiated), the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING	Martin INGESSON	Anna ZIOŁKOWSKA

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.