OPPOSITION No B 3 061 958

Nema S.R.L., Via Ca' Ricchi, 7, 40068 San Lazzaro di Savena (BO), Italy (opponent), represented by Jacobacci & Partners S.P.A., Piazza Mario Saggin, 2, 35131 Padova, Italy (professional representative)

a g a i n s t

Shenzhen Tonggao Rui Trade Co. Ltd., Room 801, 8th Floor, Jindi Dafu Kangyuan Building, East Ring Road, Longhua Street, Longhua District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 26/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 958 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 17 896 506 for the word mark ‘Toamen’. The opposition is based on Italian trade mark registration No 1 527 208 and international trade mark registration No 1 180 258 designating the European Union, both for the word mark ‘AMEN’. 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 international trade mark registration No 1 180 258 designating the European Union.

a) The goods

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Sweaters; shirts; clothing; tights; suits; trousers; outerclothing; knitwear [clothing]; vests; coats; skirts; dresses; topcoats; tee-shirts; sports singlets; wind coats; brassieres; camisoles; pants; underwear.

All the contested goods 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.

In the present case, the goods found to be identical are directed at the public at large whose degree of attention is considered to be average.

c) The signs

AMEN	Toamen
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 has a meaning in most European Union languages: ‘so be it’ (used after a prayer, creed, or other formal statement to express solemn ratification or agreement). Bearing in mind that the relevant goods are clothing, this term is distinctive since it has no meaning in relation to them. For the rest of the relevant public, for example Bulgarian-, Romanian- and Greek-speaking public, this term has no meaning and is distinctive too.

The term ‘Toamen’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive as regards the goods in question. Contrary to the opponent’s opinion, there is no reason to assume that the relevant public will dissect this term in order to perceive a concept, namely the word ‘amen’ coinciding with the opponent’s mark. Moreover, according to settled case-law, word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements, which is not the case here.

The Opposition Division will first examine the opposition in relation to the part of the public for which the opponent’s mark has no meaning, as this is the scenario in which likelihood of confusion between the signs would be most likely to arise.

Visually, the signs coincide in the string of letters ‘*AMEN’. However, they differ in the initial letters ‘TO’ present only in the contested sign and, consequently, in their overall lengths. In this respect it should be noted that 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Moreover, the specific shape of the differing two letters of the contested sign, which are not found in the earlier mark, in combination with their position at the beginning of the sign, makes it unlikely for the consumers to overlook this significant difference.

Therefore, the signs are visually similar to a low 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 ‛AMEN’. The pronunciation differs in the sound of the first two letters ‛TO’ of the contested sign, which have no counterparts in the earlier mark. Consequently, the signs have different lengths, intonation and rhythm of pronunciation.

Therefore, the signs are aurally similar to a low degree.

Conceptually, as has been set out above, neither of the signs has a meaning and since a conceptual comparison is not possible, 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.

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.

Regardless of the opponent’s allegations that the earlier trade mark enjoys enhanced distinctiveness, it did not file any evidence in order to prove such a claim.

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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the relevant goods are identical. They are directed at the public at large whose degree of attention is average.

The earlier mark is inherently distinctive to a normal degree.

The marks were found to be visually and aurally similar to a low degree.

In the present case the differing/additional letters are placed at the beginning of the contested sign, which makes it even less likely to be ignored. Consequently, the Opposition Division finds that the differences between the signs are considered to be significant to an extent that the signs are not sufficiently similar to lead to a likelihood of confusion.

It should be noted as well that 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 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). Therefore, the considerable visual differences between the signs caused by the additional first letters of the contested sign are particularly relevant when assessing the likelihood of confusion between them.

The argument of the opponent that ‘where one of the two words which alone constitute a word mark is identical, both visually and phonetically, to the single word which constitutes an earlier word mark, and where those words, taken together or in isolation, have no conceptual meaning for the public concerned, the marks at issue, each considered as a whole, are normally to be regarded as similar’ is not applicable in this specific case and it is, therefore, dismissed. The contested sign consists of only one verbal element, ‘Toamen’, which, as stated above in part c) of this decision, is unlikely to be dissected by the average consumer in two words.

The opponent further argues that ‘the contested sign ‘TOAMEN’ contains entirely the opponent’s mark’ and that this ‘justifies the conclusion that there are aural similarities between the marks’. However, as stated above in part c) of this decision, the two signs are aurally similar only to a low degree on account of their different length, intonation and rhythm of pronunciation derived from the two additional letters placed at the beginning of the contested sign.

The opponent refers to previous decisions 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, since the previous comparisons are between one meaningful word and either two meaningful words or one verbal element that can be dissected into two meaningful words by at least part of the public. Therefore, the circumstances in the previous cases cannot be extrapolated to the present case.

As stated above in section c) of this decision, the assessment of the similarity of the signs has been carried out based on the perception of the part of the public that will not associate the earlier sign with any meaning.

If there is no likelihood of confusion for the consumers that perceive the earlier sign as a meaningless term, there is, a fortiori, no likelihood of confusion for those consumers who will perceive it as a meaningful word, since the specific meaning of the earlier mark creates additional yet considerable distance between the signs.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the earlier Italian trade mark registration No 1 527 208. Since this mark is identical to the one that has been compared and cover the same 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.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Manuela RUSEVA

Tzvetelina IANTCHEVA

Marta GARCÍA COLLADO

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.