OPPOSITION No B 3 060 129

Diesel S.p.A., Via dell’Industria 4-6, 36042 Breganze (VI), Italy (opponent), represented by Barzano’ & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Otto International Inc., 4665 Coates Drive, 30213 Fairburn, United States of America (applicant), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative).

On 29/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 129 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 880 820 for the figurative mark . The opposition is based on:

1. European Union trade mark registration No 583 708 for the figurative mark ;

2. International trade mark registration No 881 767 for the figurative mark , designating the European Union.

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 583 708.

a) The goods

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

Class 18: Trunks and travelling bags.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 18: Bags; all-purpose carrying bags; handbags, sport bags, fanny packs, and luggage.

Class 25: Clothing; footwear; headgear; caps; hats; headwear; shirts; sun visors; T-shirts.

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 bags; luggage overlap with the opponent’s travelling bags. Therefore, they are identical.

The contested all-purpose carrying bags; handbags; sport bags; fanny packs are intended for carrying a variety of items. They are similar to at least an average degree to the opponent’s travelling bags since they can at least be produced by the same companies and are sold to the same public through the same distribution channels as all may be used for travelling.

Contested goods in Class 25

Clothing; footwear; headgear; headwear are identically contained in both lists of goods (including synonyms).

The contested caps; hats; sun visors are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested shirts; T-shirts are included in the broad category of the opponent’s clothing. 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.

The goods found to be identical or similar (at least to an average degree) are directed at the public at large. The degree of attention is average.

c) The signs

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 signs are both figurative depicting figurative elements which lend themselves to various interpretations. For instance, consumers may perceive these elements as a stylised upper-case letter ‘D’. Alternatively, both signs – but particularly the contested sign – could simply be seen as purely figurative. The contested sign could also be perceived as a stylised letter ‘O’ or the number ‘3’ or even a juxtaposition of the numbers ‘3’ and ‘0’. It is the comparison of the signs as filed that matters, not their possible use in combination with other elements and the way the public will perceive them. This is because, when encountering the sign, consumers will not be assisted by additional information. It is irrelevant if a verbal element is only perceived in the contested sign as the result of a comparison with the earlier mark since the consumer does not normally have the opportunity to compare signs side by side. Notwithstanding this, as the shapes share some features with the anatomy of the letter ‘D’ and the applicant has not disputed this perception (indeed, it is admitted), the Opposition Division will assume that a non-negligible part of the public will perceive both signs as representing this letter, which is the best light in which the opponent’s case may be seen, at least conceptually and aurally.

The representation of the single alphabetical character ‘D’ conveys the idea contained in this letter. This concept, in principle, has no concrete meaning for the relevant goods and the parties have not adduced any evidence that would allow a different conclusion. Consequently, the letter ‘D’ has an average degree of distinctiveness in both signs (09/09/2010, C‑265/09 P, α, EU:C:2010:508).

The stylisation of the letter ‘D’ in both signs is fairly high (see their specific description below), particularly in the contested sign which makes it difficult to recognise the letter. Therefore, the distinctiveness of their figurative aspects is average.

The figurative element of the contested sign consisting of a simple rectangular grey background is purely decorative (22/06/2017, T‑236/16, ZUM wohl (fig.), EU:T:2017:416, § 51) and therefore it has, if any, very limited distinctiveness.

Both of the signs are short, consisting of only one letter. The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Moreover, as a single letter of the Latin alphabet, consumers are confronted with the letter ‘D’ (or any other letter) several times on a daily basis in a variety of different situations (16/12/2012, R 1007/2014-4, B (fig.) / B (fig.), § 26; 22/03/2013, R 937/2012-5, X (fig.), § 22). For these reasons, consumers are inclined to pay equal or even more attention to the additional elements surrounding the letter, unless the letter per se has acquired an enhanced distinctiveness. Those other elements can be either the stylisation of the letter itself or the presence of other verbal elements or devices, even if they are weak (12/09/2017, R 2361/2016-4, Q Fermentation (fig.) / Q chocolate (fig.)). In the present case, it follows that, even if both signs were perceived as a stylised letter ‘D’, consumers would pay attention to the particular stylisation of each sign and small differences may lead to a different overall impression.

Visually, the signs are similar to the extent that, for the public/scenario being assessed, they depict or evoke a stylised representation of a letter ‘D’ formed by a thick black line. However, their visual appearance contains notable differences as they have different proportions and are accompanied by other non-negligible elements and features that have an impact on their overall impressions.

When looking at the anatomy of the capital letter ‘D’ in general, it is composed of a vertical line or stroke, which is the stem. It also contains an angled stroke which is attached to the top and bottom of the stem, and which forms the bowl. The closed space formed by it is called the counter. It can have serifs, which are small lines attached to the end of a stroke in a letter.

Turning to the features specific to the signs in question, it can be seen that the earlier mark follows this anatomy (in a stylised manner), given that all the elements are recognisable: it has the vertical stem, a bowl (which is irregular and not completely parallel, as the vertically-oriented part on the right slants towards the upper right-hand corner) and prominent serifs (with the upper serif longer than the lower serif). However, in the contested sign it is very difficult to perceive some of these elements. The stem and the bowl form a symmetric parallelogram with a small counter (as compared to the earlier mark). Moreover, instead of two serifs (typical of the letter ‘D’), the contested sign contains three horizontal lines increasing in length from top to bottom, which resemble the arms of the number ‘3’ or a reversed letter ‘E’.

Finally, the letter in the earlier mark is directly portrayed against a white background while, in the contested sign, the black figure is outlined in white against a grey background.

Each of the individual differences combined together are sufficient to outweigh the limited common elements, which are also not particularly strong, in the overall visual impression (19/12/2007, R 1132/2007-4, Rhombus (fig.) / framed square (fig.); 16/10/2013, R 2034/2012-4, fig. / fig.).

Therefore, even if a part of the public will see the letter ‘D’ formed by a thick black line, this will not diminish the effect of the different, very specific, graphic depictions, as described above. Consequently, the signs are visually similar only to a low degree (at most).

Aurally, the signs are identical insofar as they both reproduce the letter ‘D’ in the perception of the public being assessed.

Conceptually, according to current Office practice, single letters can have an independent conceptual meaning. Therefore, the signs are also conceptually identical for the public being assessed, who will associate both signs with the same letter ‘D’.

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.

In its observations of 12/12/2018 (within the time limit for substantiation), the opponent claimed that its mark is widely known by the relevant public as one of the distinctive signs of the brand ‘DIESEL’, but did not file any evidence to prove such a claim. The opponent merely refers to a hyperlink to its online store, indicating that the goods are sold in Europe. However, this does not constitute valid evidence. The onus of supplying evidence in relation to the recognition of earlier marks is on the opponent and not on the Office or the applicant. Websites are dynamic and easily updated, and most do not provide any archive of previously displayed material, or display records that enable members of the public to establish precisely when any particular content was published. The authenticity and integrity of the information cited only by means of a hyperlink to a website cannot, therefore, be verified. Consequently, this evidence is manifestly irrelevant or insufficient.

Following the applicant’s request for proof of use, the opponent submitted (on 30/09/2019, after the relevant period for substantiating the opposition) evidence to prove the extent of use (i.e. invoices and catalogues). This evidence cannot be taken into account for the purpose of proving enhanced distinctiveness as it was filed after the relevant period. It is entirely new and cannot be considered belated evidence. That is to say that no discretionary power is available. Moreover, in accordance with Article 8(5) EUTMDR, the Office may exercise its discretion under Article 95(2) EUTMR provided that the belated evidence relates to the same requirement laid down in Article 7(2) EUTMDR. However, proof of enhanced distinctive character and proof of genuine use are two different requirements.

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 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 Court has stated that likelihood of confusion must be appreciated globally, taking all the factors relevant to the circumstances of the case into account. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and partly similar to (at least) an average degree. They target the general public whose degree of attention is average. The earlier mark has a normal degree of distinctiveness.

When assessing the likelihood of confusion between signs comprising the same single letter, the visual comparison has more weight in the global assessment and is, in principle, decisive. Aural and conceptual identity may be overridden by sufficient visual differences between the signs when assessing the likelihood of confusion. Consequently, the way the letter appears in each sign under comparison is conclusive. In these cases, when the later sign causes a sufficiently different visual impression a likelihood of confusion can be safely ruled out (10/05/2011, T‑187/10, G, EU:T:2011:202, § 60).

Furthermore, generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing (and, by extension, fashion goods such footwear or bags) is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50).

As stated in section c) of this decision, the assessment of the similarity of the signs has been carried out based on the perception of the letter ‘D’ in both signs. In this scenario, the signs are pronounced in the same way and refer to a similar concept, yet, visually, they are only similar, at most, to a low degree. Even though both signs show similarities to the letter ‘D’, this letter is stylised in completely different ways, and the signs have sufficiently different proportions and graphic depictions – as described in detail above – to create distinct overall visual impressions, enabling the relevant public to distinguish between them and avoid a likelihood of confusion.

As mentioned above, the scenario analysed is the most advantageous one for the opponent, since the signs would be even less similar (or even dissimilar) for other parts of the public (i.e. those not perceiving the contested sign as the letter ‘D’, as there would be no aural or conceptual identity) and would not be perceived as coinciding in any (relevant) aspect. For instance, in view of their high stylisation, the earlier mark could be perceived as a letter ‘D’ and the contested sign as a letter ‘O’ or, alternatively, both signs – and particularly the contested sign – could be seen as purely figurative.

Therefore, there is no likelihood of confusion, despite the facts that part of the goods in question are identical and that the degree of attention is average.

In its observations of 30/09/2019, the opponent refers to previous decisions (concerning the comparison of single letters) of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are, to some extent, factually similar to the present case, the outcome may not be the same. This is because, in the following previous cases:

(‘T’ v ) decision of 25/06/2019, B 2 452 442;

(‘T’ v ) decision of 11/04/2019, B 2 732 231;

( v ) decision of 28/02/2019, B 3 034 967;

( v ) decision of 19/04/2018, B 3 038 307;

an overall similar visual impression is created by the more similar stylisation of the single letters compared or, in the first two cases, a word mark not having figurative elements to compare. Unlike these cases, in the present proceeding the letter is stylised in completely different ways, as described in detail above, leading to very different overall impressions.

Considering all the above, there is no likelihood of confusion on the part of the public in the relevant territory, regardless of which letters or figures the signs are perceived to represent. Therefore, the opposition must be rejected.

The opponent has also based its opposition on international trade mark registration No 881 767 for the figurative mark  , designating the European Union.

The other earlier right invoked by the opponent is less similar to the contested sign. This is because the stem, typical of the letter ‘D’, is missing, making it virtually impossible to associate this element with said letter. Furthermore, the representation is even more different with respect to the contested sign. Therefore, 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.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Julia GARCÍA MURILLO

Felix ORTUÑO LOPEZ

María Clara IBÁÑEZ FIORILLO

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.