OPPOSITION No B 3 082 190

Gavrieli Brands LLC, 269 S. Beverly Drive, Suite 1402, Beverly Hills, CA 90212, Beverly Hills, United States of America (opponent), represented by Roschier Brands Attorneys LTD., Kasarmikatu 21A, 00130 Helsinki, Finland (professional representative)

a g a i n s t

Luo Man, Room 401, No. 3, Cuihu Ju 20th Street, Clifford Estates, ShiGuang Road, PanYu District, GuangZhou, People´s Republic of China (applicant), represented by Franco Martegani S.R.L., Via Carlo Alberto 41, 20900 Monza (MB), Italy (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 190 is partially upheld, namely for the following contested goods:

Class 18: Bags; pocket wallets; handbags; travelling trunks; travelling sets [leatherware]; key cases; backpacks; game bags [hunting accessories]; vanity cases, not fitted; shopping bags; haversacks; compression cubes adapted for luggage; bags for sports; pouch baby carriers; reins for guiding children; umbrellas.

Class 25: Clothing; underclothing; footwear; boots; caps being headwear; hosiery; gloves [clothing]; shawls; scarfs; pyjamas; swimsuits; girdles; sleep masks; ballet shoes.

2. European Union trade mark application No 18 012 215 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 012 215 for the figurative mark . The opposition is based on international trade mark registrations No 1 069 413 and No 1 338 413, both designating the European Union, for the word mark ‘TIEKS’. The opponent invoked Article 8(1)(a) and (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 international trade mark registration No 1 338 413 designating the European Union.

1. The goods and services

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

Class 3: Cologne; cosmetic preparations for body care; cosmetics; fragrances for personal use; non-medicated skin care preparations; perfumes; hair care preparations; non-medicated sunscreen and sun care preparations; body powder; bath products namely, bath oil, bubble bath, bath powder, bath salts, shower gels and lotions; soap for personal use; moisturizers, lotions and gels; skin cleansing creams, lotions and gels; hand lotions, creams and gels; aftershave lotions; anti-perspirants; shaving cream; essential oils; nail care preparations, nail varnish, nail polish, nail varnish and polish removing preparations; talcum powder; pumice stone; emery, emery paper; dentifrices; shoe cream, shoe polish, shoe wax; cleaning and polishing preparations, including cleaning and polishing preparations for leather, footwear, handbags, sunglasses.

Class 9: Eyewear, sunglasses, spectacles, sunglasses and spectacles cases and frames, optical frames; pouches and bags adapted to carry sunglasses and spectacles; laptop cases, laptop bags; mobile phone cases; encoded bank cards; bags made of leather or imitations of leather adapted for electrical apparatus and instruments, mobile phones, laptops, pda's; apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs; pre-recorded cds, cd-roms, tapes and discs; protective footwear; electronic publications (downloadable); software applications (app's); measuring, signalling weighing and optical apparatus and instruments; calculating machines, data processing equipment and computers; electronic tags for goods.

Class 14: Jewelry; watches; jewelry articles not included in other classes including jewelry made of precious and nonprecious metals; watches, clocks and timepieces; jewelry boxes (not of precious metals).

Class 18: Cosmetic bags sold empty; handbags; umbrellas; carrying cases; traveling articles and bags not included in other classes; luggage; purses; wallets; clutches; purses; messenger bags; utility bags; sports bags; tote bags; shoe bags.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes; articles for cleaning purposes; glassware, porcelain and earthenware not included in other classes; tableware of glass, porcelain and earthenware; crockery, plates, cups, saucers, mugs, bowls, dishes, glasses, ramekins; cup holders, cup holders made of leather; pots, pans, saucepans, vases, decanters, drinking flasks, stirrers for cocktails; ice buckets, boxes, money boxes; napkin holders and rings; bottle openers, candlesticks, candelabra, baskets, waste bins and containers; litter bins, ornaments and giftware of china, glass, terracotta, porcelain or earthenware; perfume sprayers, burners and atomizers; toiletry sets, soap dishes, soap dispensers, lotion pumps, toothbrushes, toothbrush holders, shaving brushes, shaving brush holders, cosmetic brushes, nail brushes, footwear brushes, tooth picks, shoe trees, shoe stretchers, boot jacks, clothes racks, trouser presses, compacts for powders; flower pots.

Class 24: Sheets, eiderdowns, bed blankets, duvet covers, pillow cases, pillow shams, bed covers, face towels (not of paper), bath towels, tablecloths of textile; table napkins of textile, table mats not of paper.

Class 25: Apparel; footwear; headwear.

Class 35: Retail store and online retail store services featuring cosmetics and personal care products, fragrances, eyewear, smartphone and tablet cases, jewelry, luggage and handbags, housewares, bedding, tableware, textiles, towels, apparel and footwear.

The contested goods are the following:

Class 18: Bags; pocket wallets; handbags; travelling trunks; travelling sets [leatherware]; key cases; backpacks; straps of leather [saddlery]; game bags [hunting accessories]; vanity cases, not fitted; shopping bags; haversacks; compression cubes adapted for luggage; bags for sports; pouch baby carriers; reins for guiding children; umbrellas.

Class 25: Clothing; underclothing; footwear; boots; caps being headwear; hosiery; gloves [clothing]; shawls; scarfs; pyjamas; swimsuits; girdles; sleep masks; soles for footwear; ballet shoes.

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.

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 18

Handbags; bags for sports; umbrellas are identically contained in both lists of goods (including synonyms).

The contested pocket wallets are included in the opponent’s wallets. Therefore, they are identical.

The contested travelling trunks; travelling sets [leatherware] are included in the broad category of the opponent’s luggage. Therefore, they are identical.

The contested bags include, as a broader category the opponent’s tote 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.

The contested vanity cases, not fitted are included in the opponent’s cosmetic bags sold empty. Therefore, they are identical.

The contested compression cubes adapted for luggage are included in the opponent’s luggage. Therefore, they are identical.

The contested backpacks; haversacks are highly similar to the opponent’s traveling articles and bags not included in other classes. These goods have the same nature and purpose, namely to carry luggage. They also coincide in distribution channels, relevant public and producers.

The contested game bags [hunting accessories] and the opponent’s sports bags have the same nature and have the same or a similar purpose. They may be produced by the same manufacturers and may be distributed through the same channels. Furthermore, they can be in competition. Therefore, they are highly similar.

The contested key cases are similar to the opponent’s wallets. Although the main purpose of wallets is not to hold and protect keys, it is quite common to buy a wallet designed to hold these goods. Consequently, the contested key cases are similar to the opponent’s wallets since they coincide in distribution channels, producers and relevant public.

The contested shopping bags are similar to the opponent’s tote bags as they can coincide in general purpose (carrying things). They can be produced by the same companies and are sold to the same public through the same distribution channels.

The contested pouch baby carriers, reins for guiding children are lowly similar to the opponent’s apparel in Class 25. These goods may coincide in relevant public, distribution channels and manufacturers that produce and offer a range of baby articles such as clothing, cosmetics and other accessories (ex. pouch baby carriers, baby buggies, etc.).

The contested straps of leather [saddlery] are dissimilar to all the opponent’s goods in Class 18 which are various (travelling) bags, key cases and wallets whose main purpose is to carry things when it comes to bags, or to store cards, money and keys with regards to key cases and wallets. By contrast, the purpose of the contested straps of leather [saddlery] is to keep the saddle in place on a horse. This is a piece of saddlery equipment that is sold in specialised shops and targets a specific public. The contested goods are neither in competition, nor are they complementary to the opponent’s goods in Class 18. They do not coincide in producers either. The mere fact that they may be leather goods cannot be a reason for finding similarity. Neither the fact that they are classified in the same class could be a valid reason for finding similarity. In this regard reference is made to Article 33(7) EUTMR, mentioned above.

For the sake of completeness it is noted that the contested straps of leather [saddlery] are also dissimilar to the rest of the opponent’s goods and services which are various cosmetic goods in Class  3, measuring, signalling weighing and optical apparatus and instruments; data processing equipment, software applications, protective footwear; eyeglass cases, cases and bags for computers and smartphones in Class 9, watches and jewelry articles in Class 14, various household and kitchen articles and utensils in Class 21, textile articles in Class 24, and retail services in Class 35 in relation to some of the goods in the before mentioned classes. These goods and services have different purpose and nature than the contested straps of leather [saddlery]. They do not coincide neither in distribution channels, nor in relevant public. Neither they are in completion, nor they are complementary.

Contested goods in Class 25

The contested clothing; footwear are identically contained in both lists of goods (including synonyms).

The contested underclothing, hosiery; gloves [clothing]; shawls; scarfs; pyjamas; swimsuits; girdles are included in the broad category of the opponent´s apparel. Therefore, they are identical.

The contested boots; ballet shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested caps being headwear are included in the broad category of the opponent’s headwear. Therefore, they are identical.

The contested sleep masks are lowly similar to the opponent´s apparel. These goods coincide in distribution channels and producers.

However, the contested soles for footwear are dissimilar to all the opponent´s goods in Class 25. Soles for footwear is defined as the underside of a shoe, in other words, it is an integrated part of a shoe and not a separate one. The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Although there is a degree of complementarity between these goods and the opponent’s footwear, they have different natures and purposes and are usually sold through different distribution channels. Soles for footwear are intended for shoe manufacturers, while the finished products footwear target the end consumers. Furthermore, they are manufactured by different undertakings and are not in competition. The contested soles for footwear also have nothing in common with the rest of the opponent’s goods and services, addressed in the comparison for the goods in Class 18.

2. The signs

TIEKS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The marks are composed of the same word, the only difference being that in the contested figurative sign the letters are slightly stylized. Although this feature of the contested sign has very limited impact on the visual perception, it precludes the signs of being identical. Regarding the opponent´s argument about the identity of the conflicting signs, it is noted that a word mark and a figurative mark, even when both consist of the same word, are not considered identical unless the differences are so insignificant that they may go unnoticed by the relevant public. However, in the present case the contested sign is depicted in a specific typeface, as noted by the applicant. In this regard, decision B 3 059 592 is not relevant since the Opposition Division concluded there that the earlier mark was written in ordinary upper case characters.

In the present proceedings, the Opposition Division finds decision of 24/02/2010, R 964/2009-1, Klepper (fig.) / Klepper, § 44 more applicable, where due to the slightly stylised font of the contested sign, the marks have been found visually highly similar, but not identical.

Therefore, the signs are visually highly similar, aurally identical and conceptually either identical, if a meaning would be assigned to the element ‘TIEKS’, or if not, the conceptual similarity would not influence this assessment.

3. Global assessment, other arguments and conclusion

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/or 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).

As illustrated in the comparison of signs, their near identity implies that consumers will not be able to distinguish between them. This conclusion would hold true even if the distinctiveness of the coinciding element and the earlier mark as a whole was very low and irrespective of the degree of attention and the sophistication of the relevant public.

As the degree of similarity between the signs clearly offsets the low degree of similarity between some of the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR also for these goods and the opposition must be upheld for all the goods found to be identical or similar to varying degrees.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

The opponent has also based its opposition on international trade mark registration No 1 069 413 designating the European Union.

Since this mark is identical to the one which has been compared and covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because they are dissimilar, and identity between both the signs and the goods is required, which is obviously not the case.

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

The Opposition Division

Sylvie ALBRECHT

Meglena BENOVA

Mads Bjørn Georg JENSEN

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.