OPPOSITION No B 3 105 554

Chantré & Cie. GmbH, Matheus-Müller-Platz 1, 65343, Eltville, Germany (opponent), represented by Lucia Schwab, Matheus-Müller-Platz 1, 65343, Eltville am Rhein, Germany (employee representative)

a g a i n s t

Chandré Goosen Joubert, 1 Lighthouse Lane, Atlantic Beach Gold Estate, Melkbosstrand, Cape Town, South Africa (applicant), represented by Withers & Rogers LLP, Kaulbachstr. 114, 80802, Munich, Germany (professional representative).

On 08/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 554 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 046 105 for the word mark ‘CHANDRÉ & CO’. The opposition is based on European trade mark registration No 121 749 for the word mark ‘Chantré’ and German trade mark registration No 302016010362 for the word mark ‘CHANTRÉ’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

In the notice of opposition the opponent ticked the box of Article (1)(b) as a ground of the opposition as well as the boxes of the territory where the earlier mark have a reputation (Germany), and of the goods for which the trade marks have a reputation indicating ‘brandy’. In its observations filed on 06/05/2020 the opponent only refers to Article 8(1)(b) as a ground of the opposition although also states that its earlier mark ‘Chantré’ has obtained increased distinctiveness. It should be recalled that even assuming that the opponent invoked also Article 8(5) as a ground of the opposition, it must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events. In the present case, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. Based on the foregoing the opposition would have been considered in any case not well founded under Article 8(5) 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.

a) The goods and services

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

EUTM No 121749

Class 33: Brandy, spirits, alcoholic beverages (except beers).

German trade mark registration No 302016010362

Class 33: Alcoholic beverages (except beer).

The contested goods and services are the following:

Class 18: Bags; leather and imitation leather and articles made from these materials and not included in other classes, namely, wallets, purses, business card cases, credit card cases, key cases; cosmetic cases sold empty; animal skin and hide bags; luggage and carrying bags; suitcases, trunks, travelling bags, handbags and briefcases.

Class 25: Clothing, footwear, headgear.

Class 35: The bringing together, for the benefit of others, of bags, leather and imitation leather and articles made from these materials and not included in other classes, namely, wallets, purses, business card cases, credit card cases, key cases; cosmetic cases sold empty; animal skin and hide bags; luggage and carrying bags; suitcases, trunks, travelling bags, handbags and briefcases, clothing, footwear, headgear (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; retail stores or wholesale outlets, wholesaling services and retail on-line, retail store services provided via the internet, all relating to bags, leather and imitation leather and articles made from these materials and not included in other classes, namely, wallets, purses, business card cases, credit card cases, key cases; cosmetic cases sold empty; animal skin and hide bags; luggage and carrying bags; suitcases, trunks, travelling bags, handbags and briefcases, clothing, footwear, headgear; advertising services and promotion by electronic means, including by e mail; on-line advertising on a computer network; polling and opinion research services; marketing studies; advisory services relating to promotional activities in all their forms, including, sponsorship, sponsoring services, distribution of samples, distribution of advertising material, telemarketing campaigns, promotional information, organization of exhibitions, organization of trade fairs, all the aforementioned services linked to the sale of a variety of goods, including perfume, toilet preparations, cosmetics, goggles and sun glasses, jewellery, hand bags, wallets, bags, clothing, footwear, headgear and accessories; arranging of fashion shows for commercial purposes; arranging of fashion shows for promotional purposes; business management assistance; marketing; business management consultancy; relocation services for businesses; management of computer files; accounting; auditing; rental of automatic vending machines; sponsorship research; advertising; rental of advertising space; dissemination of advertising matter; direct mail advertising; direct mail advertising (tracts, brochures, printed matter, samples); arranging newspaper subscriptions for others; publication of publicity texts; business management; business administration; office functions; distribution of prospectuses and samples; business consultancy, information or enquiries; business research; commercial or industrial management assistance; business or industrial appraisals; document reproduction; employment agencies; data entry and data processing; rental of computer files; organization of exhibitions for commercial or advertising purposes; modeling for advertising or sales promotion; outdoor advertising, shop window dressing; import-export agencies relating to bags, leather and imitation leather and articles made from these materials and not included in other classes, namely wallets, purses, business card cases, credit card cases, key cases, cosmetic cases sold empty, animal skin and hide bags, luggage and carrying bags, suitcases, trunks, travelling bags, handbags and briefcases, clothing, footwear, headgear; sales promotion (for others); marketing research; auctioneering; promotion of products by television with offer of sale; organization of commercial events; management administration of exhibitions for business and advertising purposes; presentation of products through all means of communication in the retail trade; information and business advice to consumers; business administration of licensing of products and services; services of subscription to telecommunications services procurement (except their transportation) for the account of a third party of miscellaneous products of including leather wear, jewels novelties, eye wear, stationery, umbrellas, glassware, porcelain, cutlery, sport articles, of household linens, furnishings, articles of clothing and footwear and of telecommunication apparatus (except their transportation), permitting consumers seeing and buying conveniently in shop; gathering for the account of third party of jewels novelties, eye wear, stationery, umbrellas, glassware, porcelain, cutlery, sport articles, linens of house, telecommunication apparatus, bags, leather and imitation leather and articles made from these materials not included in other classes, namely wallets, purses, business card cases, credit card cases, key cases, cosmetic cases sold empty, animal skin and hide bags, luggage and carrying bags, suitcases, trunks, travelling bags, handbags and briefcases, clothing, footwear, headgear.

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 goods include mainly leather, imitations of leather and certain goods made of those materials. They are not similar to the opponent’s goods in Class 33 (which include alcoholic beverages). They differ in nature, purpose and method of use. Furthermore, they have different commercial origin, distribution channels and relevant public, and neither they are complementary nor in competition.

Contested goods in Class 25

The contested goods Clothing, footwear, headgear are used for covering and protecting parts of the human body and for fashion. They are not similar to the opponent’s goods. They differ in nature, purpose and method of use. Furthermore, they have different commercial origin, distribution channels and relevant public, and neither they are complementary nor in competition.

Contested services in Class 35

The contested services includes mainly services rendered by persons or organizations principally with the object of help in the working or management of a commercial undertaking, or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services, and the bringing together, and offering for sale, a wide variety of different goods (which are not similar to the earlier goods), thus allowing consumers to conveniently satisfy different shopping needs at one stop. They are dissimilar to the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, these goods and services have different methods of use, are offered by different undertakings and are neither in competition nor complementary. In particular, similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the goods concerned are not sold in the same specialist shops, or the same sections of department stores or supermarkets. Admittedly, like most goods, they can now be found in large retail stores. However, in such outlets the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51) since the goods sold at retail are dissimilar to the other goods.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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.

The Opposition Division

Aldo BLASI

Francesca CANGERI

Andrea VALISA

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.