OPPOSITION No B 3 071 868

WeDo GmbH, Bleichenbrücke 10, 20354 Hamburg, Germany (opponent), represented by BRL Boege Rohde Luebbehuesen Partnerschaft von Rechtsanwälten, Wirtschaftsprüfern Steuerberatern mbB, Jungfernstieg 30, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Grace Ha Co. Ltd., 2F.-2 No.76 Sec. 2 Dunhua S. Rd., Da-an Dist., 10683 Taipei City, Taiwan (applicant), represented by Ingenias, Av. Diagonal 421,2º, 08008 Barcelona, Spain (professional representative).

On 06/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 868 is partially upheld, namely for the following contested goods and services:

Class 18: Leather bags; Handbags; Shoulder bags; Briefcases; Backpacks; Leather pouches; Purses; Wallets; Key cases; Commutation-ticket holders; Business card cases; Vanity cases sold empty; bags, handbags, purses.

Class 35: Business services, namely, the provision of online trading, auctions, retail, shopping services and retail sale services in the field of all kinds of bags, and wallets; Retail services in relation to leather bags; Retail services in relation to handbags; Retail services in relation to shoulder bags; Retail services in relation to briefcases; Retail services in relation to backpacks; Retail services in relation to leather pouches; Retail services in relation to purses; Retail services in relation to wallets; Retail services in relation to key cases; Retail services in relation to commutation-ticket holders; Retail services in relation to business card cases; Retail services in relation to vanity cases sold empty.

2. European Union trade mark application No 17 932 322 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 932 322 The opposition is based on international registration designating the European Union No 1 328 001 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.

1. The goods and services

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

Class 3: Soaps; perfumery; essential oils; cosmetics; hair lotions, dentifrices.

Class 24: Woven material and fabrics, included in class 24; towels of textile; washing mitts; blankets, included in class 24; bed clothes; bath linen, except clothing.

Class 25: Clothing; belts [clothing]; shoes; headgear for wear.

Class 28: Games; toys; sports apparatus and articles, included in class 28.

The contested goods and services are the following:

Class 14: Precious stones; Watches; Pins (jewellery); Earrings; Badges of precious metal; Works of art of precious metal; Rings (jewellery); Gold thread (jewellery); Pearls (jewellery); Bracelets (jewellery); Jewellery cases (caskets); Paste jewellery; Wristwatches; Hat jewellery; Tie clips; Chains [jewellery]; Silver thread (jewellery); Necklaces (jewellery); Brooches (jewellery); Key rings (split rings with trinket or decorative fob); Jewellery.

Class 18: Leather straps; leather laces; Leather bags; Suitcases; Handbags; Traveling bags; Trunks [luggage]; Shoulder bags; Briefcases; Backpacks; Leather pouches; Purses; Wallets; Key cases; Commutation-ticket holders; Business card cases; Vanity cases sold empty; Umbrellas; Metal parts of umbrellas; Walking sticks; Canes; Handles for canes; Clothing for domestic pets; Luggage tags [leatherware].

Class 35: Business services, namely, the provision of online trading, auctions, retail, shopping services and retail sale services in the field of jewellery, cosmetics, leather products, and all kinds of bags, and wallets; Advertising; business management consultancy; Advertising and commercial information services, via the internet; Promoting and marketing the goods and services of others by distributing advertising material, coupons and discount offers via the internet; Retail services in relation to precious stones; Retail services in relation to watches; Retail services in relation to pins (jewellery); Retail services in relation to earrings; Retail services in relation to badges of precious metal; Retail services in relation to works of art of precious metal; Retail services in relation to rings (jewellery); Retail services in relation to gold thread (jewellery); Retail services in relation to pearls (jewellery); Retail services in relation to bracelets (jewellery); Retail services in relation to jewellery cases (caskets); Retail services in relation to paste jewellery; Retail services in relation to wristwatches; Retail services in relation to hat jewellery; Retail services in relation to tie clips; Retail services in relation to chains (jewellery); Retail services in relation to silver thread (jewellery); Retail services in relation to necklaces (jewellery); Retail services in relation to brooches (jewellery); Retail services in relation to Key rings (split rings with trinket or decorative fob); Retail services in relation to jewellery; Retail services in relation to leather straps; Retail services in relation to leather laces; Retail services in relation to leather bags; Retail services in relation to suitcases; Retail services in relation to handbags; Retail services in relation to traveling bags; Retail services in relation to trunks (luggage); Retail services in relation to shoulder bags; Retail services in relation to briefcases; Retail services in relation to backpacks; Retail services in relation to leather pouches; Retail services in relation to purses; Retail services in relation to wallets; Retail services in relation to key cases; Retail services in relation to commutation-ticket holders; Retail services in relation to business card cases; Retail services in relation to vanity cases sold empty; Retail services in relation to metal parts of umbrellas; Retail services in relation to walking sticks; Retail services in relation to canes; Retail services in relation to handles for canes; Retail services in relation to clothing for domestic pets; Retail services in relation to luggage tags (leatherware).

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

The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services 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 14

Luxury goods such as the contested Precious stones; Watches; Pins (jewellery); Earrings; Badges of precious metal; Works of art of precious metal; Rings (jewellery); Gold thread (jewellery); Pearls (jewellery); Bracelets (jewellery); Jewellery cases (caskets); Paste jewellery; Wristwatches; Hat jewellery; Tie clips; Chains [jewellery]; Silver thread (jewellery); Necklaces (jewellery); Brooches (jewellery); Key rings (split rings with trinket or decorative fob); Jewellery in Class 14 are, unlike the opponent claims, considered dissimilar to goods in Class 25 as the Clothing; belts [clothing]; shoes; headgear for wear of the earlier mark. Their nature and main purpose are different. The main purpose of clothing is to dress the human body, whereas jewels and the like are for personal adornment. They do not have the same distribution channels and are neither in competition, nor complementary. Even though some fashion designers nowadays also sell perfumes, fashion accessories (such as glasses and jewellery) and travel accessories under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.

The contested goods are evidently also dissimilar to the earlier cosmetic and body care products in Class 3 as well as to the textile goods in Class 24 and the toys and sport goods in Class 28, with all of which they have nothing in common, the distribution channels, the sales outlets, the producers as well as the method of use are different and the goods are neither complementary nor in competition with each other.

Contested goods in Class 18

Clothing, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested Leather bags; Handbags; Shoulder bags; Briefcases; Backpacks; Leather pouches; Purses; Wallets; Key cases; Commutation-ticket holders; Business card cases; Vanity cases sold empty; bags, handbags, purses in Class 18 are related the earlier Clothing; shoes; headgear for wear in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing, headgear and even shoes because 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 Trunks [luggage] are large packing cases or boxes that clasp shut, used as luggage or for storage; umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; Walking sticks, Canes are items used as aids for walking. The nature of these goods is very different from that of Clothing; belts [clothing]; shoes; headgear for wear in Class 25. They serve very different purposes (storage, protection from rain/sun, assistance with walking versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

The same reasoning as for trunks applies to the contested Suitcases; travelling bags; Luggage tags [leatherware]. These goods are considered dissimilar to the earlier Clothing; belts [clothing]; shoes; headgear for wear. Suitcases and Travelling bags are for carrying things when travelling and luggage tags are supplementing these goods, which do not satisfy the same needs as the earlier clothing. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary. They are therefore dissimilar.

The contested Clothing for domestic pets are used to cover parts an animal’s body and protect them against the elements. Despite being of a somewhat similar nature as the earlier Clothing; shoes; headgear for wear in Class 25 these goods are considered dissimilar. The goods do not usually have the same retail outlets and are not usually made by the same manufacturers. They are used for different purposes and are neither in competition nor complementary.

The contested Leather straps; leather laces; Metal parts of umbrellas; Handles for canes; in Class 18 are parts or supplements used to produce other goods. The fact that one product is used for manufacturing or completing another (for example, leather laces for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials and parts 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 earlier Clothing; belts [clothing]; shoes; headgear for wear. Therefore, these goods are dissimilar.

The contested goods found to be dissimilar to the earlier goods in Class 25 are evidently also dissimilar to the earlier cosmetic and body care products in Class 3 as well as to the textile goods in Class 24 and the toys and sport goods in Class 28, with all of which they have nothing in common.

Contested services in Class 35

Retail services in general are not similar to any goods that are capable of being sold by retail. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other. Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they can be complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they can be directed at the same public.

Indeed there is a low degree of similarity between the retail services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the perspective of the consumer. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialized shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer.

However, the degree of similarity between retail of specific goods on the one hand and

retail of other specific goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors. Similarity is, in principle, excluded where the goods concerned are not commonly retailed together and target different publics, or are dissimilar.

As a consequence the Opposition Division considers the contested Business services, namely, the provision of online trading, auctions, retail, shopping services and retail sale services in the field of all kinds of bags, and wallets; Retail services in relation to leather bags; Retail services in relation to handbags; Retail services in relation to shoulder bags; Retail services in relation to briefcases; Retail services in relation to backpacks; Retail services in relation to leather pouches; Retail services in relation to purses; Retail services in relation to wallets; Retail services in relation to key cases; Retail services in relation to commutation-ticket holders; Retail services in relation to business card cases; Retail services in relation to vanity cases sold empty; similar to a low degree to the earlier Clothing; belts [clothing]; shoes; headgear for wear in Class 25 as the goods which are subject of the retail have been found similar to these earlier goods as laid out above.

The contested Business services, namely, the provision of online trading, auctions, retail, shopping services and retail sale services in the field of jewellery, cosmetics, leather products, Advertising; business management consultancy; Retail services in relation to precious stones; Retail services in relation to watches; Retail services in relation to pins (jewellery); Retail services in relation to earrings; Retail services in relation to badges of precious metal; Retail services in relation to works of art of precious metal; Retail services in relation to rings (jewellery); Retail services in relation to gold thread (jewellery); Retail services in relation to pearls (jewellery); Retail services in relation to bracelets (jewellery); Retail services in relation to jewellery cases (caskets); Retail services in relation to paste jewellery; Retail services in relation to wristwatches; Retail services in relation to hat jewellery; Retail services in relation to tie clips; Retail services in relation to chains (jewellery); Retail services in relation to silver thread (jewellery); Retail services in relation to necklaces (jewellery); Retail services in relation to brooches (jewellery); Retail services in relation to Key rings (split rings with trinket or decorative fob); Retail services in relation to jewellery; Retail services in relation to leather straps; Retail services in relation to leather laces; Retail services in relation to suitcases; Retail services in relation to trunks (luggage); Retail services in relation to luggage tags (leatherware); Retail services in relation to traveling bags; Retail services in relation to metal parts of umbrellas; Retail services in relation to walking sticks; Retail services in relation to canes; Retail services in relation to handles for canes; Retail services in relation to clothing for domestic pets in consequence are considered dissimilar to any of the earlier, dissimilar goods as has been discussed above.

The remaining contested services are Advertising and commercial information services, via the internet; Promoting and marketing the goods and services of others by distributing advertising material, coupons and discount offers via the internet.

Advertising, promoting and marketing services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

These services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, these contested services are dissimilar to all the goods of the earlier mark.

2. 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 and services found to be similar are directed at the public at large.

The degree of attention will vary from average to rather high, depending on the price of the goods.

3. 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).

Both marks are made up of the two letters ‘gh‘ in a font type imitating handwriting, surrounded by a circle. In the earlier mark the letters are in a central position in the circle and the circle is interrupted to allow parts of the descender of the letter ‘g‘ and the ascender of the letter ‘h‘ to be positioned slightly outside the circle. In the contested sign the letters are inside of a complete circle positioned above the center and are inclined slightly to the right. Unlike the applicant claims, the letters are identifiable without effort. The Opposition Division considers it highly unlikely that the public will perceive the second letter as the letter ‘p‘, as the letter is open and not closed.

The element ‘gh’ of the marks has no meaning for the relevant public and is, therefore, distinctive.

As regards the marks, they are composed of a distinctive letter combination and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

Neither of the marks has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter combination ‘gh’ depicted in a handwriting font type and being surrounded by a circle. They differ however in the exact configuration of the elements as laid out above.

Therefore, the signs are highly similar.

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 ‘gh’, present identically in both signs. The further, figurative elements will not be pronounced.

Therefore, the signs are identical from an aural point of view.

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.

4. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The signs in dispute both are made up of the identical verbal and figurative elements and have therefore been found to be identical from an aural and highly similar from a visual point of view. The goods and services have been found to be partially similar and partially dissimilar.

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).

The differences between the sign can not outweigh the fact that the only distinctive elements are identical and the stylisation only differs in details.

The applicant refers to previous decisions of the Office to support its argument that a monopoly on the mere combination of only two letters should not be granted. However, this is not a general rule. The decisions at best state, that in case of short signs differences in the stylisation and presentation of these letters might play a greater role than would be the case for longer signs. It needs moreover to be noted, that 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 applicant are not relevant to the present proceedings as the signs for which these decisions have been rendered are similar to the present case only insofar as they also where short signs. However, they either where made up of only one letter (for example Opposition decision 2 665 100 and/or the differences in the stylisation have been more significant (for example Opposition decision B 2 996 141) than in the present case.

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.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion for the public for the goods and services found to be similar and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

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

The rest of the contested goods and services 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 and services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Dorothée SCHLIEPHAKE

Volker Timo MENSING

Reiner Sarapoglu

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.