OPPOSITION No B 3 082 485

Gerimport, S.L., C/ Comunidad de Madrid nº 31, 30130 Murcia/Beniel, Spain (opponent), represented by Kapler, Calle Orense 10, 12º D, 28020 Madrid, Spain (professional representative)

a g a i n s t

Huub Paymans B.V., Faradaystraat 22, 4004 JZ Tiel, the Netherlands (applicant), represented by Algemeen Octrooi- en Merkenbureau B.V., Professor
Dr. Dorgelolaan 30, 5613 AM Eindhoven, the Netherlands (professional representative).

On 27/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 485 is upheld for all the contested goods.

2. European Union trade mark application No 18 007 020 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 007 020 for the figurative mark , namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 17 951 165 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.

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 European Union trade mark registration No 17 951 165 for the figurative mark .

1. The goods and services

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

Class 35: Wholesaling, retailing in shops and via global computer networks of furniture, games, toys and playthings, clothing, hats, bags, parasols, household utensils and containers; Import services.

The contested goods, after a limitation of the specification requested by the applicant on 23/09/2019 who resigned from the services in the Class 35 (the goods in Class 25 remain unchanged), are the following:

Class 25: Clothing, footwear, headgear.

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.

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale). Moreover, the Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34).

In relation to retail services of specific goods, the similarity, or the lack thereof, between the goods to which the retail services relate and the goods covered by the other mark constitute an essential factor which needs to be taken into account. Retail services of specific goods can be similar to varying degrees, or dissimilar to specific goods depending on the degree of similarity between the goods themselves, but also taking into account other relevant factors.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). 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 are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

Therefore, the contested clothing, headgear are similar to an average degree to the opponent’s retailing in shops and via global computer networks of clothing, hats.

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.

A low degree of similarity between the goods sold at retail and the goods themselves may also be sufficient to lead to a finding of a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialized shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumer.

Taking into account the above the contested footwear is similar to a low degree to the opponent’s retailing in shops and via global computer networks of clothing, hats.

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 contested goods and the opponent’s services found to be similar (to varying degrees) 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘enjoy’/’ENJOY’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The word ‘enjoy’/’ENJOY’, present in both signs, means ‘to take delight or pleasure in (an activity or occasion)’ (extracted from Oxford Dictionary at https://www.lexico.com/en/definition/enjoy on 20/07/2020). It is neither descriptive nor allusive in relation to the goods and services in question. Therefore, it is distinctive.

The word ‘Summer’ of the earlier mark means ‘the warmest season of the year, in the northern hemisphere from June to August and in the southern hemisphere from December to February’ (extracted from Oxford Dictionary at https://www.lexico.com/en/definition/summer on 20/07/2020). Bearing in mind that the relevant services are retailing in shops and via global computer networks of clothing and hats, this verbal element is weak for these services as it can indicate that they refer to the retail of summer clothing and hats.

The earlier mark contains numerous figurative elements, for instance a depiction of a sunbed, which will all be related to the verbal element ‘summer’ and therefore also weak for the same reasons as stated above. In addition, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign also contains a letter ‘e’ with two vertical short lines below and above it, behind the verbal element ‘ENJOY’ and in a lighter colour, serving as a background. For this reason, it will have less of an impact than said verbal element, although as such the letter ‘e’ is distinctive. Furthermore, the letter ‘e’ refers and reinforces the first letter in the word ‘ENJOY’. The stylisation of the verbal elements in the contested sign (i.e. ‘ENJOY’ depicted in rather common characters and ‘e’ written in a slightly stylised font), the two dots before and after ‘ENJOY’, the vertical lines and the colours used therein, are not particularly fanciful and their impact on the comparison of the signs will be limited.

The signs in conflict have no elements that could be considered clearly more dominant than other elements.

The applicant argues that ‘the word ENJOY is just in a very tiny negligible way present in the earlier sign’. It must be however noted that this is the only fully distinctive verbal element in the earlier mark. Furthermore, although it is depicted in small letters, it is placed centrally and presented in orange characters placed on a white background. Therefore, it is clearly perceptible. Taking into account the above, the applicant’s claim must be set aside.

Visually, the signs coincide in the verbal element ‘enjoy’/’ENJOY’, which is the earlier mark’s most distinctive verbal element. However, they differ in the element ‘Summer’ of the earlier mark, its numerous figurative elements and the stylisation of the verbal elements. Furthermore, the signs differ in the letter ‘e’ of the contested sign, the stylisation of the verbal elements, and its figurative elements.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘enjoy’/’ENJOY’, present identically in both signs. The pronunciation differs in the sound of the letters ‛Summer’ of the earlier mark, which has no counterpart in the contested sign. They can also differ in the letter ‘e’ of the contested sign (if pronounced).

Therefore, the signs are aurally at least similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, having in common the word ‘enjoy’/’ENJOY’, the signs are conceptually at least similar to an average degree.

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 services in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some elements with a limited distinctiveness in the mark (i.e. ‘Summer’ and the summer-related figurative elements), as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods

and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods are similar (to varying degrees) to the opponent’s services. They target the general public, whose degree of attention is average. The signs are visually similar to a low degree, and aurally and conceptually at least similar to an average degree. Furthermore, the earlier mark, as a whole, has a normal degree of distinctiveness.

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).

Bearing in mind the consumer’s imperfect recollection and the fact that the distinctive verbal element of the earlier mark ‘enjoy’ is entirely included in the contested sign, the aforesaid differences between the signs are not sufficient to outweigh the similarities between them. As explained above, the remaining verbal and figurative elements of the signs in question, the stylisation of their letters and colours used, have a reduced impact on the overall perception of the signs, because of their weak distinctiveness, secondary role or decorative nature. The Opposition Division is convinced that consumers might believe that the conflicting goods (contested sign) and services (earlier mark) come from the same undertaking or economically linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘enjoy’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘enjoy’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 951 165. It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Helen Louise MOSBACK

Michal KRUK

Alicia BLAYA ALGARRA

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.