OPPOSITION No B 3 069 013

El Corte Inglés, S.A., Hermosilla, 112, 28009, Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Rimex Trading, Georgi Benkovski, 14 Str. 2nd floor, 1000 Sofia, Bulgaria (applicant).

On 27/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 013 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 940 710 for the figurative mark . The opposition is based on European Union trade mark registration No 14 766 604 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK – EARLIER WELL-KNOWN MARK – Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR

In cases where the opponent invokes a registered trade mark and claims the same mark in the same country as a well-known mark, this will in general be taken as a claim that its registered mark has acquired a high degree of distinctiveness by use.

In the present case, the opposition is based on European Union trade mark registration No 14 766 604 under Article 8(1)(b) EUTMR. In addition, the opponent has claimed that the same mark is a well-known mark in Spain for goods that are entirely included in the specification of this registered mark. Therefore, the Opposition Division considers that the opposition is not based on a well-known mark, but rather on a registered trade mark for which enhanced distinctiveness is claimed. The examination of the opposition will proceed on this basis.

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, inter alia, the following:

Class 18: Leather and his/her imitations; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 18: Bags.

Class 25: Clothing.

The contested bags in Class 18 include, as a broader category, the opponent’s travelling bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Clothing is identically included in both lists of goods in Class 25.

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 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 English word ‘unit’ of the earlier mark refers, inter alia, to ‘a single undivided entity or whole’ (information extracted from Collins Dictionary on 18/11/2019 at https://www.collinsdictionary.com/dictionary/english/unit). This word may also be associated with that meaning by part of the non‑English speaking public due to its similarity to the equivalent words in other languages, such as French (‘unité’), Italian and Maltese (‘unitâ’), Romanian (‘unitate’), Dutch (‘unit’), Portuguese (‘unidade’) and Spanish (‘unidad’). The remaining public will perceive the word ‘unit’ as meaningless. In any case, irrespective of whether or not it will be understood, the word ‘unit’ is considered distinctive for the opponent’s goods, since it is neither descriptive nor allusive to an extent that would materially affect its degree of distinctiveness.

The first element contained in the contested sign will be perceived as a device composed of the letters ‘UNK’, since they are readily perceivable and are most of the letters of the second element depicted underneath, ‘UNIK’. The arrangement of these three letters is rather peculiar because they are all joined together. Furthermore, this device is the dominant element of the sign because of its central position and bigger size. On its own, the letters ‘UNK’ have no meaning in relation to the goods in question and this element is, therefore, distinctive.

The element ‘UNIK’ of the contested sign will be understood by part of the
public, for example the Swedish-speaking part, as having a meaning
equivalent to the meaning of the English word ‘unique’, namely ‘the only one of its kind’ (information extracted from Collins Dictionary on 18/11/2019 at https://www.collinsdictionary.com/dictionary/english/unique). This word may also be associated with that meaning by many other parts of the public due to its similarity to the equivalent words in the relevant languages, for example Maltese (‘unika’), Dutch (‘uniek’) Latvian (‘unikāls’), Lithuanian (‘unikalus’), Polish (‘unikalny’), Czech (‘unikatni’), Romanian (‘unic’), Bulgarian (‘unikalen’), Spanish and Portuguese (‘único’), Italian (‘unico’), English and French (‘unique’). For this part of the relevant public, this element is at most weak as it is a laudatory term, conveying information of a promotional or advertising nature (23/09/2009, T-396/07, Unique, EU:T:2009:353, § 21). The Polish-speaking consumers may understand the word ‘UNIK’ as having a meaning equivalent to the meaning of the English verb ‘to dodge’, which
refers to a sudden quick movement, often to avoid being hit, caught, or seen (information extracted from Collins Dictionary on 18/11/2019 at https://www.collinsdictionary.com/dictionary/english/dodge). For this part of the public, this element has no clear meaning in relation to the goods in question and is, therefore, distinctive. The remaining public will perceive the word ‘UNIK’ as meaningless and, therefore, also distinctive.

The dark‑grey rectangular background of the earlier mark and the white background and black rectangular frame of the contested sign are basic geometrical shapes of a purely decorative nature and, therefore, they are non‑distinctive.

Visually, the signs coincide in the sequence of letters ‘uni*’. However, they differ in the final letter of this verbal element, namely the letter ‘t’ in the earlier mark and the letter ‘k’ in the contested sign. The graphemes of these two letters are quite different. Furthermore, these verbal elements have different stylisations, namely that ‘unit’ is depicted in a white lower case typeface and the letters are very close to each other, whereas ‘UNIK’ is depicted in black capital letters and the letters are far apart between them.

The contested sign also differs from the earlier mark in its beginning, namely in the device composed of the letters ‘UNK’, which is the dominant element of the sign and also the most distinctive element for a significant part of the relevant public. In addition, the signs differ in their structures and layouts (one element versus two elements located on two lines) and figurative elements (the dark-grey rectangular background of the earlier mark versus a white background and black rectangular frame in the contested sign).

Therefore, taking into account the above principles and assertions on the distinctiveness and dominance of the signs’ elements, the signs are visually similar to a low degree.

The opponent claims that the signs are similar to the extent that they share a significant number of letters in the same position. 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 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). In the present case, it must be added that the verbal elements ‘unit’ and ‘UNIK’ are relatively short and consumers normally perceive differences in short elements more easily. Therefore, the opponent’s argument in this respect must be set aside.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‘uni*’, present identically in both signs. The pronunciation differs in the sounds of the final letters of each element starting with ‘uni-’, namely the consonant ‘t’ in the earlier mark and the consonant ‘k’ in the contested sign. The pronunciation further differs in the sound of the letters ‘UNK’, which constitute the first and dominant element of the contested sign. The opponent claims that these three letters will not be pronounced, however this argument is not plausible as they are prominently depicted in the contested sign and there is no reason why they would be overlooked by the consumer.

Therefore, taking into account the above principles and assertions on the distinctiveness and dominance of the signs’ elements, the signs are aurally similar to a low degree.

Conceptually, for the part of the public that will perceive a concept in the respective elements ‘unit’ and ‘UNIK’, as the signs will be associated with a dissimilar meaning, the signs are conceptually not similar.

For the part of the public that will recognise the concept associated either with the English word ‘unit’ of the earlier mark or the word ‘UNIK’ of the contested sign, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the remaining part of the public, which will not associate either of the signs with any meaning, a conceptual comparison is not possible and, thus, 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.

As stated above, the Opposition Division considers that the opponent has claimed enhanced distinctiveness as result of its intensive use in Spain in connection with all the goods in Class 25 for which it is registered, namely clothing, footwear and headgear. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Several press articles in Spanish taken from different websites, one dated 2011, others dated 2017 and the rest are undated. The earlier trade mark appears together with references to the opponent.

• A catalogue from 2017 showing the earlier trade mark in relation to clothing.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use. The content of these documents does not reveal any self-explanatory data from which further conclusions could be drawn (e.g. sales figures, a ranking showing the position of the trade mark in the relevant market, a market survey, etc.).

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.

5. 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 goods are identical and target the public at large with an average degree of attention.

The signs are visually and aurally similar to a low degree. While it is true that the element ‘UNIK’ in the contested sign reproduces three out of the four letters of the earlier mark, ‘unit’, it is a secondary element and the signs differ in all their other elements and in their structures and overall depictions. In particular, the contested sign begins with the device formed by the letters ‘UNK’, which is also the dominant element. Furthermore, the conflicting elements between the signs have different endings that result in different words ‘unit’ / ‘unik’ which have different meanings in at least some parts of the relevant territory. Accordingly, it has been concluded that the signs are either not conceptually similar or the conceptual comparison is not possible depending on the part of the relevant public, as explained above.

The earlier mark has a normal degree of distinctiveness.

The opponent refers to the principle of interdependence, according to which a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, however the fact that the goods are considered identical cannot, in this case, compensate for the important differences between the signs.

The opponent also refers to the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. However, in the present case, an imperfect recollection of the signs can lead only to even less similarity between the signs, mainly because of the dominant element of the contested sign, ‘UNK’, which has no counterpart in the earlier mark.

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

For the sake of completeness, the Opposition Division notes that in its observations the opponent argues that use of the contested sign could take unfair advantage of the repute of the earlier mark or that it will be detrimental to its distinctive character and the opponent’s repute. These are the requirements of a separate ground of opposition, namely Article 8(5) EUTMR. It should be noted, however, that the opponent did not invoke this ground in its notice of opposition of 20/11/2018. In addition, as stated in section d) of the present decision, the opponent did not prove enhanced distinctiveness of its earlier mark. It follows that this argument has to 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. 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

Helen Louise MOSBACK

Marta GARCÍA COLLADO

María del Carmen SUCH SÁNCHEZ

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.