OPPOSITION Nо B 3 067 043

Deutsche Rentenversicherung Knappschaft-Bahn-See, Pieperstr. 14-28, 44789 Bochum, Germany (opponent), represented by Schneiders & Behrendt PartmbB, Rechts- und Patentanwälte, Huestr. 23 (Kortumkarree), 44787 Bochum, Germany (professional representative)

a g a i n s t

Idealvi S.R.L., Via dell'Annunciata 31, Milano, Italy (applicant), represented by Dr. Modiano & Associati S.P.A., Via Meravigli, 16, 20123 Milano, Italy (professional representative).

On 21/07/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 067 043 is partially upheld, namely for the following contested goods:

Class 18: Toiletry bags; cases of imitation leather; toilet bags (sold empty); carry-on bags; vanity cases, not fitted; cosmetic purses; key cases made of leather; casual bags; handbags; purses; all-purpose carrying bags; diplomatic bags; roll bags; waterproof bags; casual bags; multi-purpose purses; bags for campers; hiking bags; handbags; work bags; chain mesh purses; shoulder bags; shoe bags; cross-body bags; gym bags; artificial fur bags; backpacks; sports packs; carrying cases for documents; briefcases [leather goods]; folio cases; business card cases; card holders made of leather; card holders made of imitation leather; and carrying bags. Class 25: All the contested goods in this Class.

2.

European Union trade mark application No 17 925 205 is rejected for all the above goods. It may proceed for the remaining goods.

3.	Each party bears its own costs.

REASONS

On 22/10/2018, the opponent filed an opposition against all the goods (in Classes 18 and 25) of European Union trade mark application No 17 925 205 (figurative mark). The opposition is based on, inter alia, German trade mark registration No 30 607 065 (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 German trade mark registration No 30 607 065.

a) The goods

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

Class 16: Printed matter; books; printed publications; teaching materials (except apparatus); operating and user manuals in printed form; brochures; office requisites (except furniture); data sheets and/or data pages; data processing programmes in printed form; printed forms; photographs (printed); manuals and other written material to accompany computer programs and/or technical apparatus and equipment; manuals (handbooks), calendars; catalogues; teaching materials (except apparatus) in the form of printed matter, games, models, wallboards, drawing equipment and presentation equipment; teaching materials for the field of electronic data processing in the form of flow charts, program listings, program descriptions and hardware and/or software training programs, the aforesaid goods being in printed form; paper, cardboard and goods made from these materials (included in class 16); paper hand towels and/or face towels; handkerchiefs of paper; prospectuses; writing instruments; writing tablets; stationery; blanks; periodicals, newspapers.

Class 25: Clothing (included in class 25); shoes and/or footwear (included in class 25); headgear; heels; layettes (clothing); bathing suits; bathing trunks; bath robes; bathing caps; bath shoes; inner soles; pocket squares; footmuffs, not electrically heated; belts (clothing); clothing for gymnastics; gymnastic shoes; scarves; gloves (clothing); slippers; hoods (clothing); ready-made linings (parts of clothing); corsets (underclothing); neckties; ascots; bibs, not of paper; clothing of leather; sweat-absorbent underwear; corselets; dressing gowns; combinations (clothing); parkas; furs (clothing); cyclists' clothing; neck scarves (mufflers), sleepsuits, iron fittings for boots; welts for footwear; soles for footwear; aprons; boots for sports (included in class 25); boots (included in class 25); headbands (clothing); beach clothes; beach shoes; stockings; tights; knitwear (clothing); T-shirts; uniforms; underwear; waistcoats (included in class 25).

The contested goods are the following:

Class 18: Suitcases; toiletry bags; travelling sets [leatherware]; cases of imitation leather; toilet bags (sold empty); luggage; carry-on bags; travel luggage; vanity cases, not fitted; cosmetic purses; key cases made of leather; tie cases for travel; wheeled luggage; trunks [luggage]; traveling trunks; leather for shoes; imitation leather; labels of leather; leather luggage straps; leather for harnesses; leather thread; casual bags; handbags; purses; all-purpose carrying bags; diplomatic bags; roll bags; waterproof bags; casual bags; multi-purpose purses; bags for campers; hiking bags; handbags; work bags; chain mesh purses; shoulder bags; garment carriers; shoe bags; garment carriers; cross-body bags; gym bags; artificial fur bags; semi-worked fur; fur; backpacks; sports packs; suitcases; leather suitcases; wheeled suitcases; garment bags for travel; carrying cases for documents; briefcases [leather goods]; folio cases; business card cases; travel garment covers; card holders made of leather; card holders made of imitation leather; leather and imitations of leather; animal skins, hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leads and clothing for animals.

Class 25: Shoes; footwear for women; gymnastic shoes; dress shoes; flat shoes; stiffeners for shoes; rainshoes; goloshes; heels; walking shoes; tennis shoes; waterproof shoes; platform shoes; menswear; casualwear; ladies' clothing; girls' clothing; evening wear; tennis wear; formalwear; loungewear; roll necks [clothing]; rainproof clothing; hats; berets; bandanas (scarves); caps with visors; sports caps; fedoras; clothing for gymnastics; pumps [footwear]; knitted baby shoes; non-slipping devices for footwear; bath shoes; beach shoes; footwear not for sports; children's footwear; undershirts; long-sleeved shirts; short-sleeved t-shirts; hooded tops; warm-up tops; trousers; weatherproof pants; trousers for children; leggings (trousers); stretch pants; sports pants; casual trousers; short trousers; warm-up pants; boots; rain boots; ladies' boots; shirts; casual shirts; open-necked shirts; short-sleeve shirts; turtleneck shirts; tennis shirts; knit shirts; shirts for suits; shirt-jacs; gowns; socks; woollen socks; sports socks; sweat-absorbent socks; tennis socks; ankle socks; non-slip socks; stockings; underwear; underwear; underwear; nightwear; coats; leather jackets; coats for men; coats for women; fur coats and jackets; pea coats; men's and women's jackets, coats, trousers, vests; heavy coats; winter coats; sweaters; polo sweaters; sweaters (pullovers); turtleneck sweaters; mock turtleneck sweaters; skirts; culotte skirts; boxer shorts; denim jeans; denim jeans; sashes for wear; neck scarves [mufflers]; foulards [clothing articles]; scarves; silk scarves; headdresses [veils]; wooden shoes; sandal-clogs; printed t-shirts; tee-shirts; jumpers; hosiery; maillots; maillots [hosiery]; fleece tops; jogging tops; jersey clothing; pelisses; clothing made of fur; gloves [clothing]; knitted gloves; winter gloves; gloves including those made of skin, hide or fur; chemises; men's suits; swimming costumes; bathing suit cover-ups; bathing costumes for women; swim wear for children; bathing suits for men; jackets [clothing]; sports jackets; reversible jackets; long jackets; rainproof jackets; leather jackets; sheepskin coats; fur jackets; bed jackets; dinner jackets; blousons; topcoats; dust coats; clothing, footwear, headgear.

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, indicates that the specific goods 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 18

The contested toiletry bags; cases of imitation leather; toilet bags (sold empty); carry-on bags; vanity cases, not fitted; cosmetic purses; key cases made of leather; casual bags; handbags; purses; all-purpose carrying bags; diplomatic bags; roll bags; waterproof bags; casual bags; multi-purpose purses; bags for campers; hiking bags; handbags; work bags; chain mesh purses; shoulder bags; shoe bags; cross-body bags; gym bags; artificial fur bags; backpacks; sports packs; carrying cases for documents; briefcases [leather goods]; folio cases; business card cases; card holders made of leather; card holders made of imitation leather; carrying bags are related to opponent’s clothing (included in class 25), footwear (included in class 25) and headgear in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories as they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered to be similar.

The contested suitcases; travelling sets [leatherware]; luggage; travel luggage; tie cases for travel; wheeled luggage; trunks [luggage]; traveling trunks; leather for shoes; imitation leather; labels of leather; leather luggage straps; leather for harnesses; leather thread; garment carriers; garment carriers; semi-worked fur; fur; suitcases; leather suitcases; wheeled suitcases; garment bags for travel; travel garment covers; leather and imitations of leather; animal skins, hides; luggage; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leads and clothing for animals include raw materials, goods for carrying things when travelling, clothing and accessories for animals, small pieces of leather attached to an object and giving information about it; umbrellas, which are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod; parasols, which are light umbrellas carried for protection from the sun; walking sticks, which are canes or other staffs used as aids for walking; whips, which are instruments used for driving animals; harnesses, which are the gear or tackle with which a draft animal pulls a vehicle or implement; and saddlery, which is equipment for horses, such as saddles and harnesses. They are dissimilar to the opponent's goods in Classes 16 and 25 as they differ in their nature, purpose and method of use. Furthermore, they have different distribution channels, relevant public and commercial origin, and neither they are complementary nor in competition.

The fact that one product is used for manufacturing another (for example, the contested leather for shoes v the opponent’s shoes) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels are quite distinct. The raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent's goods in Classes 16 and 25.

Furthermore, the contested leather for shoes is also dissimilar to the opponent’s goods intended for shoemakers (soles for footwear, heels) as these goods, although targeting the same public, have different natures, methods of use, intended purposes, manufacturers and distribution channels, and they are sold in different retail outlets.

The mere fact that some of these contested goods can be used to carry clothing is not sufficient to find similarity as they are different kinds of luggage and cases for storage and travelling, and are not regarded as complementary accessories to clothing. Even if some of them target the same consumers or can be found in the same stores, they are of a different nature, serve different needs and purposes (storage vs covering the body) and they do not follow the same method of use. They are neither complementary nor in competition. Although some brands can produce a wide range of products that include, for instance, both clothing items and travelling items, this is not the usual practice in the market, where they are normally produced by different companies.

Contested goods in Class 25

The contested menswear; casualwear; ladies' clothing; girls' clothing; evening wear; tennis wear; formalwear; loungewear; roll necks [clothing]; rainproof clothing; bandanas (scarves); clothing for gymnastics; undershirts; long-sleeved shirts; short-sleeved t-shirts; hooded tops; warm-up tops; trousers; weatherproof pants; trousers for children; leggings (trousers); stretch pants; sports pants; casual trousers; short trousers; warm-up pants; shirts; casual shirts; open-necked shirts; short-sleeve shirts; turtleneck shirts; tennis shirts; knit shirts; shirts for suits; shirt-jacs; gowns; socks; woollen socks; sports socks; sweat-absorbent socks; tennis socks; ankle socks; non-slip socks; stockings; underwear; underwear; underwear; nightwear; coats; leather jackets; coats for men; coats for women; fur coats and jackets; pea coats; men's and women's jackets, coats, trousers, vests; heavy coats; winter coats; sweaters; polo sweaters; sweaters (pullovers); turtleneck sweaters; mock turtleneck sweaters; skirts; culotte skirts; boxer shorts; denim jeans; denim jeans; sashes for wear; neck scarves [mufflers]; foulards [clothing articles]; scarves; silk scarves; printed t-shirts; tee-shirts; jumpers; hosiery; maillots; maillots [hosiery]; fleece tops; jogging tops; jersey clothing; pelisses; clothing made of fur; gloves [clothing]; knitted gloves; winter gloves; gloves including those made of skin, hide or fur; chemises; men's suits; swimming costumes; bathing suit cover-ups; bathing costumes for women; swim wear for children; bathing suits for men; jackets [clothing]; sports jackets; reversible jackets; long jackets; rainproof jackets; leather jackets; sheepskin coats; fur jackets; bed jackets; dinner jackets; blousons; topcoats; dust coats; clothing are identical to the opponent’s clothing (included in class 25), either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

The contested shoes; footwear for women; gymnastic shoes; dress shoes; flat shoes; rainshoes; goloshes; walking shoes; tennis shoes; waterproof shoes; platform shoes; pumps [footwear]; knitted baby shoes; bath shoes; beach shoes; footwear not for sports; children's footwear; boots; rain boots; ladies' boots; wooden shoes; sandal-clogs; footwear are identical to the opponent’s footwear (included in class 25), either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

The contested hats; berets; caps with visors; sports caps; fedoras; headdresses [veils]; headgear are identical to the opponent’s headgear, either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

Heels are identically contained in both lists of goods.

The contested stiffeners for shoes; non-slipping devices for footwear are parts to be used in the manufacture of footwear, which target professionals in the fashion industry. These goods are similar to the opponent's soles for footwear (which are also parts used in the manufacture of footwear), because they coincide in producer, end user and distribution channels.

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 are directed at the public at large and professionals in the fashion industry. The degree of attention is considered average since the goods that target the professionals are routine parts used in the manufacture process.

c) Distinctiveness of the earlier mark and comparison of the signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

In addition, 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 his mark is particularly distinctive by virtue of intensive use or reputation. Consequently, the present assessment will rest on the earlier mark’s distinctive character per se.

The earlier mark depicts a central filled circle, surrounded by an outer ring with three interruptions. Since there is no link with the relevant goods, the distinctiveness of the earlier mark must be seen as normal.

The contested sign contains a similar central filled circle, surrounded by an outer ring with three interruptions. However, the latter are positioned in different places compared to the ones of the earlier mark. Since there is no link with the relevant goods, this figurative element is distinctive.

The contested sign’s figurative element is surrounded by the letters ‘NO’ on the left and ‘VA’ on the right. However, since the size of the figurative element is the same as the letters, it cannot be excluded that a part of the relevant public will perceive the contested sign as ‘NOOVA’. In any event, the letters ‘NO’ and ‘VA’ or the verbal element ‘NOOVA’ have no meaning in relation to the relevant goods; therefore, they have a normal degree of distinctiveness.

Contrary to the opponent’s arguments, the contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their depiction of a central filled circle, surrounded by an outer ring with three interruptions. Although there is a difference in the position of the three interruptions, this difference is not significant.

Furthermore, the signs differ in the contested sign’s letters ‘NO’ and ‘VA’, placed before and after the figurative element. Although, when signs consist of both verbal and figurative components, in principle, the verbal element of the sign usually has a stronger impact on the consumer than the figurative element, in the present case, the entire earlier mark is completely included (although with minor differences) in a central position in the contested sign, moreover, enhanced through its bold font, which will catch the relevant public’s attention.

Therefore, the signs are visually similar to an average degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the earlier mark is purely figurative, it is not possible to compare the signs aurally.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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) Global assessment, other arguments and conclusion

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.

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).

As stated above in section a) of this decision, the goods are partly identical, partly similar and partly dissimilar. As identity or similarity of goods is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at the dissimilar goods cannot be successful.

The goods found to be identical or similar target the general and professional public, whose degree of attention is average. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar to an average degree, as they depict a central filled circle, surrounded by an outer ring with three interruptions, which is included with minor differences in both signs. Furthermore, this figurative element is in bold and in the center of the contested sign, which will attract the consumers’ attention. Moreover, in the case of the earlier mark, this figurative element is its sole element.

The difference in the position of the three interruptions and the contested sign’s additional letters are not sufficient to outweigh the visual similarities between the signs. Therefore, it is highly conceivable that the relevant public, paying an average degree of attention, will confuse the trade marks or could believe that the identical or similar goods offered under the signs at issue originate from the same or economically linked undertakings.

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, although the signs are aurally and conceptually neutral, 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 visual similarities between the signs are particularly relevant when assessing the likelihood of confusion between them. Furthermore, as explained above, it is not always the verbal component that takes precedence, especially in relation to the relevant goods.

In addition, although the relevant public may detect some differences between the signs, it is likely that consumers will perceive these differences as different versions of the marks (e.g. according to a given product line). It is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the figurative aspects or by adding verbal elements, to denote a new product. Indeed, in this case, 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 goods that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). Therefore, the likelihood that the public may associate the signs with each other is very real.

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 German trade mark registration No 30 607 065.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The opponent has also based its opposition on the following earlier German trade mark registrations: No 30 513 058 for the figurative mark and No 30 513 004 for the figurative mark .

Since these marks cover the same scope of goods as earlier German trade mark registration No 30 607 065, analysed above, 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. 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

Astrid WÄBER

Lidiya NIKOLOVA

Katarzyna ZANIECKA

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.