OPPOSITION No B 3 084 973

ADAMO-Fashion GmbH, Wilhelmstr. 71, 72145 Hirrlingen, Germany (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Adamo Island Saddles LLC, 1909 Foggy Ridge Parkway, 33559 Lutz, United States of America (applicant), represented by Westphal, Mussgnug & Partner Patentanwälte mit beschränkter Berufshaftung, Am Riettor 5, 78048 Villingen-Schwenningen, Germany (professional representative).

On 28/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 973 is upheld for all the contested goods, namely:

Class 25: Headwear; shirts.

2. European Union trade mark application No 18 042 409 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 042 409 for the word mark ‘ADAMO ISLAND SADDLES’, namely against all the goods in Class 25. The opposition is based on German trade mark registration No 30 159 932 and international trade mark registration No 1 303 090 designating Benelux, France and Spain, both for the word mark ‘ADAMO’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 German trade mark registration No 30 159 932.

1. The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Headwear; shirts.

The contested headwear is identically contained in the opponent’s list of goods (given that it is synonymous to headgear) and the contested shirts are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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 considered to be average.

3. The signs

ADAMO	ADAMO ISLAND SADDLES
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Both signs under comparison are word marks written in an upper-case typeface.

The verbal element ‘ADAMO’, found in both signs, has no meaning for the relevant public and is, therefore, distinctive.

The verbal element ‘ISLAND’ of the contested sign does not exist as such in German. However, at least part of the public in the relevant territory will understand the meaning of this term, either because of familiarity with this English word or due to its aural similarity with the German word ‘Eiland’ which means ‘small island’. Whether or not the verbal element ‘ISLAND’ is understood, it has a normal degree of distinctiveness in relation to the goods at issue.

The last verbal element of the contested sign, ‘SADDLES’, is very similar to the word ‘Sattel’ in German, which has the same meaning (i.e. a seat on a bicycle, motorcycle, etc. or a leather seat on a horse). Again, whether or not it is understood, this verbal element is distinctive to a normal degree in relation to the goods in question.

Visually and aurally, the signs coincide in the verbal element ‘ADAMO’ and its sound. However, they differ in the remaining verbal elements of the contested sign, namely ‘ISLAND’ and ‘SADDLES’, and their sounds.

It is important to note that the only verbal element of the earlier mark, ‘ADAMO’, is placed at the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with 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.

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

Conceptually, although part of the public in the relevant territory may perceive the meaning(s) of the verbal elements ‘ISLAND’ and/or ‘SADDLES’ of the contested sign as explained above, the other sign has no meaning in that territory. In this event, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

However, for the remaining part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible in this case, 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 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As concluded above, the contested goods are identical to the opponent’s goods and they target the public at large with an average degree of attention. The earlier trade mark has a normal degree of inherent distinctiveness.

The signs in conflict are visually and aurally similar to an average degree and conceptually not similar for part of the public, while for the rest the conceptual aspect does not influence the assessment of the similarity of the signs, as explained in detail above in section c) of this decision. The signs have the verbal element ‘ADAMO’ in common, which is the only verbal element of the earlier mark and which plays an independent and distinctive role within the contested sign. Furthermore, it is the element which first catches the attention of the consumers when perceiving the contested sign.

The Opposition Division is of the opinion that the differences between the signs, as indicated above, are not sufficient to counteract their similarities and to exclude a likelihood of confusion.

Indeed, 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. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public may detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is therefore conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking under the mark ‘ADAMO’.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the public in the relevant territory and, therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 159 932.

It follows that the contested trade mark must be rejected for all the contested goods.

As earlier German trade mark registration No 30 159 932 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Anna BAKALARZ

Martin MITURA

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.