OPPOSITION No B 3 066 261

Gerry Weber International AG, Neulehenstr. 8, 33790 Halle, Germany (opponent), represented by Ruttensperger Lachnit Trossin Gomoll, Patent- und Rechtsanwälte Partnerschaftsgesellschaft mit Beschränkter Berufshaftung, Arnulfstrasse 58, 80335 München, Germany (professional representative)

a g a i n s t

Camoon S.R.L., Via Larga 6, 51039 Quarrata (PT), Italy (applicant), represented by Stefano Fanfani, Via Giovanni Bovio 19, 50136 Firenze, Italy (professional representative).

On 27/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 261 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 17 939 511 . The opposition is based on international trade mark registration No 1 148 772 for the word mark ‘SAMOON’ designating the European Union. 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.

a) The goods

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

Class 25: Clothing, footwear, headgear; belts (clothing); gloves(clothing).

The contested goods are the following:

Class 25: Clothing; ladies’ clothing; menswear; children’s wear; beach clothes; dresses; bath robes; bandanas [neckerchiefs]; underwear; suspenders; leotards; stockings; socks; breeches for wear; blouses; shirts; bodices [lingerie]; casual jackets; waist belts; tights; layettes [clothing]; bathing suits; cravats; sweat shirts; foulards [clothing articles]; spats; jackets [clothing]; rainproof jackets; skirts; overalls; gloves [clothing]; denim jeans; leggings [leg warmers]; jerseys [clothing]; hosiery; sweaters; muffs [clothing]; pelerines; trousers; pelisses; pyjamas; shawls; collar protectors; overcoats; stoles; tee-shirts; combinations [clothing]; dressing gowns; berets; hats; visors; footwear; slippers; sandals; half-boots; boots; sandal-clogs.

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.

Clothing and footwear are identically contained in both lists of goods.

The contested ladies’ clothing; menswear; children’s wear; beach clothes; dresses; bandanas [neckerchiefs]; underwear; suspenders; leotards; stockings; socks; breeches for wear; blouses; shirts; bodices [lingerie]; casual jackets; waist belts; tights; layettes [clothing]; bathing suits; cravats; sweat shirts; foulards [clothing articles]; jackets [clothing]; rainproof jackets; skirts; overalls; gloves [clothing]; denim jeans; leggings [leg warmers]; jerseys [clothing]; hosiery; sweaters; muffs [clothing]; pelerines; trousers; pelisses; pyjamas; shawls; overcoats; stoles; tee-shirts; combinations [clothing]; dressing gowns are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested berets; hats; visors are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested slippers; sandals; half-boots; boots; sandal-clogs are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested spats are a type of classic footwear accessory. They share distribution channels, relevant public and producers with the opponent’s footwear; therefore, they are similar.

The contested bath robes are similar to the opponent’s clothing because they coincide in producer, relevant public, method of use and distribution channels. However, as their main purpose differs (the main purpose of bathrobes is drying, not only covering the body), these goods are found to be similar and not identical.

The contested collar protectors are at least similar to the opponent’s clothes. Collar protectors are pieces of cloth manufactured to protect the collars of shirts from wearing out rapidly, sweat stains, loss of colour, etc. They target the same consumers and are often manufactured by the same undertakings. Furthermore, they are normally found in the same shops or in the same sections of department stores and are complementary, due to the close connection that exists between the contested goods and the shirts they are used with, which are covered by the opponent’s broad category of clothes.

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. The degree of attention is average, contrary to the applicant’s arguments. The Court held that ‘clothing for men and women are everyday consumer items and the trade mark on which the opposition is based is registered as a European Union trade mark. It follows that the relevant public by reference to which the likelihood of confusion must be assessed is composed of the general public in the European Union’ (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 25).

c) The signs

SAMOON
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).

For the purpose of this comparison and bearing in mind that similarities between signs are higher if there is also an aural similarity, the Opposition Division will assess the signs from the perspective of the Slovak- and Czech-speaking public as the phonetical assessment will be the most advantageous scenario for the opponent because the sounds of the letter ‘S’ and ‘C’ are similar in these languages.

The earlier sign is the word mark ‘SAMOON’; the use of lower- or upper-case letters is therefore immaterial. Furthermore, it is meaningless and therefore distinctive for the relevant goods.

The contested sign is composed of a figurative element, namely a cartoon animal head (a camel) and a verbal element. The figurative element is not in any way descriptive or weak for the relevant goods and therefore is distinctive.

Taking into account the most advantageous scenario for the opponent, the Opposition Divisions finds it appropriate to analyse the mark on the presumption that the verbal element will be perceived as one word, namely ‘camoon’. This verbal element has no meaning and is distinctive for the relevant goods. Furthermore, the verbal element is written in a very stylised font, including an incomplete or half ‘O’.

The figurative element of the contested sign overshadows the verbal element of the mark by virtue of its central position and size. Therefore, the figurative element is visually co-dominant with the verbal element of the contested sign.

Visually, the signs coincide in ‘*AMOON’. However, they differ in their first letter, namely ‘S’ in the earlier sign and ‘C’ in the contested sign. Furthermore, they differ in the typography of the verbal elements. Although a word mark may use a wide variation of typographies, the contested sign is depicted in a fanciful manner with different types of stylised ‘O’s, one of them being a crescent moon, which is striking. The co-dominant figurative element of the camel also has an important impact in the visual comparison, which cannot be underestimated.

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.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually or phonetically similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, as the first letter, which attracts most attention, differs in both marks and as the second letter ‘O’ in the contested sign is styled to a point where it is barely identifiable, the Opposition Division considers the signs similar to at most a low degree.

Aurally, considering the best-case scenario for the opponent, both verbal elements are phonetically highly similar for the Slovak- and Czech-speaking public as there only is a slight difference in the pronunciation of the first letter.

As the figurative element is not subject to a phonetic assessment, it has no impact in the aural comparison.

Therefore, the signs are aurally similar to a high degree,

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative cartoon of an animal head in the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

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.

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, § 23).

The goods are identical or similar. The earlier mark has a normal degree of distinctiveness and the relevant public pays an average degree of attention.

The Opposition Division has considered the best-case scenario for the opponent, analysing the verbal element of the contested sign as one word ‘CAMOON’ as perceived by the Slovak- and Czech-speaking public (as their pronunciation of both verbal elements is similar to a high degree).

Even basing the comparison on these assumptions, there are enough visual differences between the signs, namely the highly stylised verbal element of the contested sign and the half complete letter ‘O’, to conclude that the signs are similar to at most a low degree. Even a circumspect and well-informed consumer will notice a difference in the first letter.

As the verbal elements of both signs have no meaning, the only element with a meaning is the figurative element of the contested sign, namely the cartoon of an animal head. This element communicates a clear and specific concept in an immediate manner to the relevant public. As it is also co-dominant, it further enhances the differences between the marks.

Furthermore, generally in clothes shops customers can either choose the clothes they wish to buy themselves 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). Consequently, the considerable visual differences between the signs caused mainly by the figurative element of the cartoon animal head device and the highly stylised verbal element of the contested sign are particularly relevant when assessing the likelihood of confusion between them.

As the Opposition Division did not find likelihood of confusion for the part of the public that in this case is most prone to confusion, as explained above, the outcome of the assessment is equally applicable to the remaining part of the public, as:

 the English-, German-, Italian-, Portuguese- and Spanish-speaking public would pronounce the first letter of the verbal element of the contested sign as a /k/ and not as an /s/, making the signs aurally less similar.

 another part of the public would divide the verbal element of the contested sign into ‘camo’ and then a crescent moon and another decorative figure, (which would not necessarily be recognised as the letter ‘n’).

Therefore, although a certain degree of similarity between the marks cannot be denied, this similarity, in view of the above considerations, does not result in a likelihood of confusion. This is even the case, despite the fact that the goods are considered similar or even identical.

Considering all the above, the Opposition Division considers that the relevant public, even if only displaying an average degree of attention, will be able to safely distinguish between the signs and consequently, there is no likelihood of confusion. 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, 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

Gonzalo BILBAO TEJADA

Astrid Victoria WÄBER

Marta Maria CHYLINSKA

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.