OPPOSITION No B 3 085 798

Target Brands, Inc., 1000 Nicollet Mall, TPS-3165, 55403-2467 Minneapolis, United States of America (opponent), represented by CSY London, 10 Fetter Lane, EC4A 1BR London, United Kingdom (professional representative)

a g a i n s t

Aedon Studio GmbH, Kluckstr. 25, 10785 Berlin, Germany (applicant).

On 17/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 798 is partially upheld, namely for the following contested goods:

Class 18: Luggage, bags, wallets and other carriers.

Class 25: Clothing; Shorts; Bottoms [clothing]; Nightwear; Polo knit tops; Khakis; Neckbands; Knitwear [clothing]; Headgear; Footwear.

2. European Union trade mark application No 18 029 103 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 029 103 ‘AËDON’ (word mark). The opposition is based on European Union trade mark registration No 17 970 277 ‘AUDEN’ (word mark), European Union trade mark registration No 17 970 284 ‘AUDEN’ (word mark), United Kingdom trade mark registration No 3 346 912 ‘AUDEN’ (word mark) and United Kingdom trade mark registration No 3 346 924 ‘AUDEN’ (word 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 17 970 277 ‘AUDEN’ and European Union trade mark registration No 17 970 284 ‘AUDEN’.

1. The goods and services

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

European Union trade mark registration No 17 970 277 ‘AUDEN’:

Class 18: Travelling bags; weekend bags; overnight bags; cosmetic bags sold empty; toiletry bags sold empty; allpurpose carrying bags that feature a removable insert for holding a breast pump; diaper bags.

Class 22: Mesh bags for washing laundry.

European Union trade mark registration No 17 970 284 ‘AUDEN’:

Class 25: Intimate apparel; lingerie; bras; sports bras; adhesive bras; straps for bras; camisoles; bodysuits; underwear; long underwear; thermal underwear; shapewear, namely, girdles, bras, camisoles, underwear, slips, stockings, pantyhose, tights, shorts, and leggings; sleepwear; pajamas; nightgowns; loungewear; sweatshirts; sweaters; socks; sleep shirts, shorts, tank tops, pants, and wraps; one-piece sleeping garments; robes; slippers; nursing and maternity apparel, namely, bras, underwear, tank tops, shirts, pants, shawls, sweaters, dresses, and pajamas.

Class 35: Retail department store services, online retail department store services connected with the sale of intimate apparel, lingerie, bras, sports bras, adhesive bras, bra extenders, bra strap cushions, straps (for bras), removable breast enhancer pads (used in bras), camisoles, bodysuits, underwear, long underwear, thermal underwear, shapewear (namely, girdles, bras, camisoles, underwear, slips, stockings, pantyhose, tights, shorts, and leggings), sleepwear, pajamas, nightgowns, loungewear, sweatshirts, sweaters, socks, sleep shirts, shorts, tank tops, pants and wraps, one-piece sleeping garments, robes, slippers, nursing and maternity apparel (namely, bras, underwear, tank tops, shirts, pants, shawls, sweaters, support belts, dresses, and pajamas), cosmetics, personal care products namely, perfume, cologne, fragrances, bath beads, bath flakes, bath oil, bath gels, bath salts, bath foam, non-medicated skin care preparation (in the nature of body mist, body oil, body lotion, body scrub, body soap, body wash, body spray, bubble bath, body cream, face cream, face soap, skin creams, skin soap, essential oils for personal use, aromatic oils, scented oils, non-medicated foot soaks, fragrant body splash, fragrant body mist, lotions, hand lotion, face lotion, lip balm, lip gloss, shampoo, hair conditioner, hair gels, hair oils, massage cream, massage lotion, massage oil, nail polish, body powder, shower cream, shower gel, hand soap, hand-sanitizing preparations, non-medicated skin cleaners), potpourri, incense, scented sachets, room fragrances, room fragrance dispensers, room fragrance refills for non-electric room fragrance dispensers, candles, travelling bags, weekend bags, overnight bags, cosmetic bags sold empty, toiletry bags sold empty, all-purpose carrying bags (that feature a removable insert for holding a breast pump), diaper bags, mesh bags (for washing laundry).

The contested goods and services are the following:

Class 18: Luggage, bags, wallets and other carriers.

Class 24: Bed linen and blankets; Bath linen.

Class 25: Clothing; Shorts; Bottoms [clothing]; Nightwear; Polo knit tops; Khakis; Neckbands; Knitwear [clothing]; Headgear; Footwear.

Class 35: Advertising, marketing and promotional services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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.

It is also reminded that the comparison of goods and services must be based on the wording used in the lists of goods and/or services in question, that is, for which the trade mark is registered or for which registration is sought. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s arguments on the way of production and commercialisation of the goods and services in question must be set aside.

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

The contested bags 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.

The contested luggage overlaps with, and is therefore identical to, the opponent’s travelling bags.

The contested wallets and other carriers are similar to the opponent’s travelling bags. They can have the same producers, distribution channels and relevant public.

Contested goods in Class 24

Contrary to what the opponent argues, the contested bed linen and blankets; bath linen have no relevant points in common with the opponent’s goods and services. For example, the main point of contact between textile goods, like in this case the opponent’s bed linen and blankets; bath linen in Class 24, and clothing in Class 25, is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, for protection and/or fashion, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, the opponent’s goods in Class 25 are considered dissimilar to the contested bed linen and blankets; bath linen. These contested goods in Class 24 are also dissimilar to the opponent’s goods in Classes 18 and 22, which are bags of various kinds. These goods do not have the same nature, purpose or methods of use. Moreover, they do not have the same producers, distribution channels or relevant public. Finally, the contested bed linen and blankets; bath linen are also dissimilar to the opponent’s services in Class 35, which are retail services in relation to mainly clothes, bags, candles, cosmetics and perfumery including fragrancing preparations. These goods and services do not have the same nature, purpose, producers/providers or distribution channels, neither are they in competition or complementary. Therefore, they are dissimilar.

Contested goods in Class 25

Shorts are identically contained in both lists of goods.

The contested clothing includes, as a broader category, the opponent’s intimate apparel. 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 bottoms [clothing] overlaps with the opponent’s pants. Therefore, they are identical.

The contested nightwear includes, as a broader category, the opponent’s nightgowns. Therefore, they are identical.

The contested footwear refers to garments worn on the feet, which includes the opponent’s slippers. 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 khakis are included in the broad category of the opponent’s pants. Therefore, they are identical.

The contested polo knit tops; knitwear [clothing] are similar to the opponent’s tank tops. They have the same nature and purpose and can have the same producers, distribution channels and relevant public.

The contested headgear have some points in common with the opponent’s nursing and maternity apparel, namely shawls. They can have the same manufacturers, distribution channels and relevant public. Moreover, they are to some point in competition, since they can both be use for covering/warming/clothing the head. Therefore, they are considered similar.

Finally, the contested neckbands are similar to the opponent’s nursing and maternity apparel, namely shawls. They can have the same producers, distribution channels and relevant public.

Contested services in Class 35

The contested advertising, marketing and promotional services have no relevant points in common with any of the opponent’s goods and services in Classes 18 and 22 (bags of various kinds), in Class 25 (clothing and footwear) and retail services of various goods in Class 35. The contested services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client's position in the market and acquiring competitive advantage through publicity. These services are provided by specialist companies, which study their client's needs, provide all the necessary information and advice for marketing the client's goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos or the internet, etc. Therefore, they have a different purpose, are provided by different companies, are not distributed through the same channels and do not target the same public as the opponent’s goods and services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, they are dissimilar.

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 or similar are directed at the public at large. The degree of attention is average.

3. The signs

AUDEN	AËDON
Earlier trade marks	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 marks ‘AUDEN’ and ‘AËDON’ are not meaningful in certain territories, for example in Sweden and Finland. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Swedish- and Finnish-speaking part of the public.

All marks are word marks. ‘AUDEN’ and ‘AËDON’ have no meaning for the relevant public under analysis and are, therefore, distinctive. The Latin origin in all signs, as argued by the opponent, is not likely to be known by the general relevant public under analysis, neither the writer and the character from Greek mythology respectively, as the applicant claims. No evidence has been submitted in order to show such perceptions either.

Visually, the signs coincide in four letters out of five, with three in the same position, namely ‘A*D*N’, and, in addition, in the letter ‘E’, however in fourth position in the earlier signs and in second position in the contested sign. The two dots above the letter ‘E’ of the contested sign have no meaning for the public under assessment, as such diacritics are generally not present in the languages under assessment, at least not above this letter. Contrary to the applicant’s argument, it is an element of a little trade mark significance on its own. However, the marks differ in the second letter ‘U’ of the earlier signs and the penultimate letter ‘O’ and the two dots over the letter ‘E’, in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories under assessment, the pronunciation of the signs coincides in the sound of the letters ‛A*D*N’ and in the sound of an additional letter ‘E’ (regardless of the diacritics above this letter in the contested sign, for reasons explained above) present in both signs, however the latter in different positions. The pronunciation differs in the sound of the second letter ‘U’ of the earlier marks and the fourth letter ‘O’ of the contested sign. However, the marks have an identical number of letters and a similar structure (two vowels, consonant, vowel, consonant). Therefore, the public under assessment is likely to pronounce the marks in the same number of syllables, namely [A-U-DEN] and [A-E-DON] respectively.

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

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, 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.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. 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 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods and services are partly identical, partly similar and partly dissimilar. They are directed at the public at large with an average degree of attention.

The signs are visually and aurally similar to an average degree, to the extent that they coincide in four out of five letters whereof three in the same position, and the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier marks have 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).

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Swedish- and Finnish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations. 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.

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

The rest of the contested goods and services 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 and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• United Kingdom trade mark registration No 3 346 912 for the word mark ‘AUDEN’;

• United Kingdom trade mark registration No 3 346 924 for the word mark ‘AUDEN’.

Since these marks are identical to the ones which have been compared and cover the same scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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

The Opposition Division

Martin MITURA

Lena FRANKENBERG GLANTZ

Christian STEUDTNER

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.