OPPOSITION No B 3 063 184

Debenhams Retail Limited, 334-348 Oxford Street, W1C 1JG London, United Kingdom (opponent), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, SG5 3PF Shillington, Hitchin, United Kingdom (professional representative)

a g a i n s t

Wenzhou Maxim Bags Co. Ltd., 4F-1, Building 2, Oujiangkou Industrial Agglomeration Area, Wenzhou, Zhejiang, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 19/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 184 is partially upheld, namely for the following contested goods:

Class 18: Travelling trunks; bags; imitation leather; leather laces; handbags; trunks [luggage]; bags for sports.

Class 25: Clothing; layettes [clothing]; headgear for wear; hosiery; gloves [clothing]; scarves; girdles; shoes; boots; wedding dresses.

2. European Union trade mark application No 17 892 622 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 17 892 622 for the word mark ‘FaithTime’. The opposition is based on, inter alia, European Union trade mark registration No 1 118 413 for the word mark ‘FAITH’ and United Kingdom trade mark registration No 2 213 687 for the word mark ‘FAITH SHOES’. 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 1 118 413 for the word mark ‘FAITH’ and United Kingdom trade mark registration No 2 213 687 for the word mark ‘FAITH SHOES’, since these are the most similar ones to the contested sign and have the broadest scope of protection regarding the goods.

a) The goods

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

European Union trade mark registration No 1 118 413 (earlier mark 1)

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; handbags.

Class 25: Footwear, boots, shoes and sandals.

United Kingdom trade mark registration No 2 213 687 (earlier mark 2)

Class 18: Articles made of leather or of imitation leather; articles of luggage; handbags, shopping bags, travelling bags, sport bags, tote bags, travelling cases, business cases, attache cases, portfolios and briefcases; belts, wallets, credit card cases, key holders; parts and fittings for all the aforesaid goods; all included in class 18.

Class 25: Clothing; footwear; headgear; boots, shoes, sandals, inner soles and fittings for footwear; tights, stockings and socks.

The contested goods are the following:

Class 18: Travelling trunks; bags; imitation leather; leather laces; umbrellas; canes; clothing for pets; handbags; trunks [luggage]; bags for sports.

Class 25: Clothing; layettes [clothing]; headgear for wear; hosiery; gloves [clothing]; scarves; girdles; shoes; boots; wedding dresses.

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 travelling trunks overlap with the opponent’s travelling cases (earlier mark 2) and trunks and travelling bags (earlier mark 1) (including synonyms). Therefore, they are identical.

The contested bags include, as a broader category, the opponent’s handbags (earlier marks 1 and 2). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested imitation leather is identically contained in both lists of goods (including synonyms), (earlier mark 1).

The contested bags for sports are identically contained in both lists of goods (including synonyms), (earlier mark 2).

The contested handbags are identically contained in both lists of goods (earlier marks 1 and 2).

The contested trunks [luggage] are included in the broad category of the opponent’s articles of luggage (earlier mark 2). Therefore, they are identical.

When comparing the contested goods, namely leather laces with the opponent’s vague term goods made of these materials (leather) (earlier mark 1) and articles made of leather (earlier mark 2); without further examples or an express limitation by the opponent clarifying the term, it cannot be assumed that they have the same purpose, that their methods of use coincide, that they share the same distribution channels or that they are in competition or complementary. However, their nature can be considered the same as they are leather goods and it is reasonable to assume that the goods may be produced by the same companies, given that the required knowhow and machinery (i.e. to cut leather) may also be the same. Therefore, these goods can only be found similar to a low degree.

The contested umbrellas; canes; clothing for pets are dissimilar to all the opponent’s goods in Classes 18 and 25 of both earlier marks. They differ in nature and purpose, they are neither complementary nor in competition. They also target a different public, have different distribution channels and are normally produced by other kinds of undertakings.

Contested goods in Class 25

The contested clothing; headgear for wear; shoes; boots are identically contained in both lists of goods (including synonyms) (earlier mark 2).

The contested layettes [clothing]; hosiery; gloves [clothing]; scarves; girdles; wedding dresses are included in the broad category of the opponent’s clothing (earlier mark 2). Therefore, these 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 and similar to a low degree are directed both at the public at large and at a more professional public, such as that in the leather and imitation leather industries. The level of attention is average.

c) The signs

FAITH (earlier mark 1) FAITH SHOES (earlier mark 2)	FaithTime
Earlier trade marks	Contested sign

The relevant territory is the European Union (earlier mark 1) and the United Kingdom (earlier mark 2).

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 common element ‘FAITH’ is 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 relation to earlier mark 1).

The earlier marks and the contested sign are all word marks. Earlier mark 1) consists of the word ‘FAITH’, earlier mark 2) of the words ‘FAITH SHOES’ and the contested sign of the word ‘FaithTime’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in upper- or lower-case letters, or in a combination thereof.

Regarding earlier marks 1) and 2), the word ‘FAITH’ refers to ‘a strong or unshakeable belief in something, especially without proof or evidence; a specific system of religious beliefs’ (information extracted from Collins English Dictionary on 04/09/2019, at https://www.collinsdictionary.com/dictionary/english/faith). It has, however, no particular meaning for the relevant public for the goods at issue and is, therefore, distinctive to a normal degree. However, the word ‘SHOES’ of earlier mark 2) is perceived as such and is, at most, a weak element for at least part of the goods that are either footwear in Class 25 or all kinds of articles or accessories related to them. The most distinctive element of earlier mark 2) is the word ‘FAITH’.

With respect to the contested sign, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). As it concerns a word mark and even though in this case the elements ‘Faith’ and ‘Time’ are not visually separated from each other by a space, consumers naturally look for a meaning when reading a word. The element ‘Faith’ has the same meaning as in the earlier marks. The element ‘Time’ refers to ‘a measurement in minutes, hours, days, and years’ (information extracted from Collins English Dictionary on 04/09/2019, at https://www.collinsdictionary.com/dictionary/english/time). Since this element has no particular meaning related to the relevant goods, it is equally as distinctive as the element ‘Faith’.

Visually, the signs are similar to the extent that they coincide in the letters ‘FAITH’, being the only word of earlier mark 1) that is entirely contained in the contested sign. Regarding earlier mark 2), the only difference is that this verbal element is separated from the next one in this mark, while it is written in one word together with another element in the contested sign. The marks differ in the second verbal element of the earlier mark 2), which is ‘SHOES’ (an, at most, weak element for a part of the goods), while in the contested sign ‘FAITH’ is followed by the element ‘Time’.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the fact that the first word of the signs coincide is relevant for the comparison.

Therefore, for all the aforementioned reasons and also taking into account the issue of distinctiveness, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‘FAITH’, present identically in all signs and not only being the only element in earlier mark 1) and the most distinctive element in earlier mark 2) (for at least a part of the goods), but also placed at the beginning where the consumer usually focuses more of their attention. The pronunciation differs in the sound of the element ‛SHOES’ (earlier mark 2), which is of limited distinctiveness for at least a part of the goods, and of ‘Time’ of the contested sign.

Therefore, for all the aforementioned reasons and also taking into account the issue of distinctiveness, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning insofar as they all refer to the concept of ‘FAITH’, the signs are conceptually similar to at least an average degree. Earlier mark 2) has an additional meaning and the contested sign also has an additional meaning that is not shared by the earlier marks.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of an at most weak element in earlier mark 2) for at least a part of the goods, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found partly identical or similar to a low degree and partly dissimilar and are directed at the public at large and to a more professional public whose level of attention is average. The earlier marks as a whole have a normal degree of distinctiveness.

The marks have been found visually, aurally and conceptually similar to at least 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, § 26).

Taking into account all the circumstances, the identity between the only element of earlier mark 1); the first and most distinctive element (for some of the goods) of earlier mark 2); and the first element of the contested sign are enough to counteract the few differences. It can reasonably be concluded that consumers will not be able to distinguish between the marks in dispute for the goods that are identical and similar to a low degree and will perceive them as having the same origin.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 1 118 413 for the word mark ‘FAITH’ and United Kingdom trade mark registration No 2 213 687 for the word mark ‘FAITH SHOES’.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to a low degree to those of the earlier trade marks.

In view of all the relevant factors in the present case and also the principle of interdependence between them, that is, the principle that a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these goods.

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:

 United Kingdom trade mark registration No 2 213 657 for the word mark ‘FAITH DIRECT’ for articles made of leather or of imitation leather; articles of luggage; handbags, shopping bags, travelling bags, sport bags, tote bags, travelling cases, business cases, attache cases, portfolios and briefcases; belts, wallets, credit card cases, key holders; parts and fittings for all the aforesaid goods; all included in class 18 in Class 18 and clothing; footwear; headgear; boots, shoes, sandals, inner soles and fittings for footwear; tights, stockings and socks in Class 25.

 United Kingdom trade mark registration No 3 259 010 for the word mark ‘FAITH’ for clothing; footwear and headgear; swimwear, lingerie in Class 25.

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

 International trade mark registration No 1 322 421 designating the European Union for the word mark ‘FAITH’ for retail services in connection with the sale of jewellery, watches, bags, handbags, clutch bags, wallets, purses, clothing, footwear and headwear in Class 35.

 United Kingdom trade mark registration No 3 189 384 for the word mark ‘FAITH’ for retail services in connection with the sale of watches, bags, handbags, clutch bags, wallets, purses, footwear and headwear; retail services in connection with the sale of clothing and jewellery, none being for religious or spiritual purposes, or relating to religion or spiritual matters in Class 35.

The other two aforementioned earlier rights invoked by the opponent cover services in Class 35, which are clearly different to the remaining goods umbrellas; canes; clothing for pets of the contested trade mark.

The opponent’s retail services in connection with the sale of jewellery, watches, bags, handbags, clutch bags, wallets, purses, clothing, footwear and headwear and retail services in connection with the sale of watches, bags, handbags, clutch bags, wallets, purses, footwear and headwear; retail services in connection with the sale of clothing and jewellery, none being for religious or spiritual purposes, or relating to religion or spiritual matters and the contested umbrellas; canes; clothing for pets are not similar. Apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are at least not identical.

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.

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

Saida CRABBE

Chantal VAN RIEL

Carlos MATEO PÉREZ

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.