OPPOSITION No B 3 067 722

Intermoda, S.A. de C.V., San Pedro Sula, Cortés, Honduras (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010, Madrid, Spain (professional representative)

a g a i n s t

Stefano Abbati, via Raoul Grisendi 2, 42027, Montecchio Emilia, Italy (applicant).

On 10/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 722 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against some the goods of European Union trade mark application No 17 932 505 for the figurative mark , namely all the goods in Class 25. The opposition is based on Spanish trade mark registration No  3 513 546 for the 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.

1. The goods

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

Class 25: Clothing; Footwear; Headgear.

The contested goods are the following:

Class 25: Clothing; Footwear; Headgear.

The goods are identical.

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 found to be identical are directed at the public at large.

The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 contested sign is a figurative mark consisting of a figurative element in black and red colours big size and central position that could be perceived as ‘ЯE’. On the left side of the figurative element is displayed in very small size the stylised word ‘REVOLUTION’.

The figurative element of the contested sign could be perceived as ‘ЯE’. This element has no connection with the relevant goods and is considered distinctive.

The figurative element of the contested trade mark overshadows the verbal elements of the mark by virtue of its central position and size. The figurative element is the visually dominant element of the contested trade mark.

The earlier mark is a figurative mark consisting of a device element and the expression ‘PEPEREVOLUTION &CO.’.

As regards the earlier mark, although ’PEPEREVOLUTION’ is one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).

The element ‘PEPE’ of the earlier mark will be understood as a pet form of the Spanish name José. This element has no immediate and direct relation with the relevant goods and is distinctive.

The element ‘REVOLUTION’ included in both marks will be understood by the relevant public as a revolt or as an innovation/transformation in a particular area of human activity because the equivalent word in Spanish is so similar in spelling and pronunciation that it will be attributed said concept. As this word has no meaning in connection with the relevant goods, it is distinctive.

As regards the earlier mark is likely that ‘PEPE’ will be perceived as informing on whom the revolution belongs to. Therefore, it is considered that the term ‘REVOLUTION’ has an accessory role to ‘PEPE’.

The element ‘& CO.’ of the earlier mark is the abbreviated English expression for ‘and company’ and is an internationally known and common abbreviation used as the ending of business and company names as a reference to its legal form, where other partners or parties are not named in the title of the firm and will be seen as such by the relevant public. Therefore, it has a low distinctiveness.

The device element of the earlier mark has no specific meaning and it is considered to be distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the term ‘REVOLUTION’ that is the second verbal element of the earlier mark and is placed in secondary position and is of very small size in the contested sign. However, they differ in ‘PEPE’ (which is distinctive) and ‘&CO.’ (which is weak) and the device element of the earlier mark (which is distinctive), and the figurative element of the contested sign which is distinctive and a dominant element of the sign.

Therefore, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘REVOLUTION’, present in both signs. The pronunciation differs in the sound of the letters ‘PEPE’ and ‘&CO’ of the earlier mark and ‘ЯE’ of the contested sign if pronounced.

Therefore, the signs are aurally similar to a below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The mere fact that the two words can be grouped under a common generic term by no means constitutes a case of conceptual similarity. As mentioned above the word ‘REVOLUTION’ in the earlier mark will be perceived as referring to ‘PEPE’. Therefore, the marks are conceptually similar only to the extent that REVOLUTION is present in both of them.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C 39/97, Canon, § 16, EU:C:1998:442, § 29).

The goods are identical. The level of attention of the relevant public is average.

The earlier mark enjoys an overall average degree of inherent distinctiveness.

The marks are visually similar to a very low degree, aurally similar to a below-average degree and are conceptually similar only to the extent that REVOLUTION is present in both of them. Furthermore, the figurative element of the contested sign is visually outstanding because of its significant size and central position while the element ‘REVOLUTION’ is very small in size and placed in a secondary position. In the earlier mark the element ‘PEPE’ and the device, both distinctive, precedes the element ‘REVOLUTION’ and will not go unnoticed. The structures of the signs as a whole are also strikingly different.

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/different verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them.

Taking into account the above mentioned, it is considered that the similarities between the marks are not sufficient to lead to a likelihood of confusion on the part of the public. The differences between the signs are clearly perceptible. Therefore, the differences between the signs are sufficient to exclude any likelihood of confusion between them.

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

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Francesca CANGERI

Riccardo RAPONI

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.