OPPOSITION Nо B 3 084 979

 

Kroko Bags SL, Gran Bretanya 43, Nau 5, 08700 Igualada (Barcelona), Spain (opponent), represented by Intelect Legal Services, Diputació, 304, 1º 4ª, 08009 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Kroko Proizvodnja I Razvoj, Belostenčeva 8, 10000 Zagreb, Croatia (applicant).

 

On 25/06/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.

Opposition No B 3 084 979 is upheld for all the contested goods, namely: Class 18: Bags; handbags; holdalls for sports clothing; all-purpose carrying bags; duffel bags; weekend bags; bags made of leather; bags for climbers; garment carriers; courier bags; game bags [hunting accessories]; handbags, purses and wallets; bumbags; multi-purpose purses; pouches; waterproof bags; valises; grips [bags]; flight bags; travel baggage; gentlemen's handbags; hiking bags; bags for campers; ladies' handbags; portmanteaus; bucket bags; school bags; rucksacks.

2.

European Union trade mark application No 18 046 308 is rejected for all the contested goods. It may proceed for the remaining goods.

 

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 046 308  (figurative mark), namely against all the goods in Class 18. The opposition is based on National Trademark Registration (Spain) No 3 500 196, 'KROKO' (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.

 

 

a) The goods

 

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

Class 18: Leather and imitations of leather, namely bags, wallets, purchases and carders; animal skins; trunk and suitcases; umbrella and umbrellas; canes; fugars and articles of saddlery.

The contested goods are the following:

 

Class 18: Bags; handbags; holdalls for sports clothing; all-purpose carrying bags; duffel bags; weekend bags; bags made of leather; bags for climbers; garment carriers; courier bags; game bags [hunting accessories]; handbags, purses and wallets; bumbags; multi-purpose purses; pouches; waterproof bags; valises; grips [bags]; flight bags; travel baggage; gentlemen's handbags; hiking bags; bags for campers; ladies' handbags; portmanteaus; bucket bags; school bags; rucksacks.

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

 

The term ‘namely’, used in the opponent’s list of goods 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 specifically listed.

 

Contested goods in Class 18

The contested bags; handbags; all-purpose carrying bags; duffel bags; weekend bags; bags made of leather; bags for climbers; courier bags; game bags [hunting accessories]; handbags, purses and wallets; bumbags; waterproof bags; grips [bags]; flight bags; travel baggage; gentlemen's handbags; hiking bags; bags for campers; ladies' handbags; bucket bags; school bags; pouches; rucksacks; holdalls for sports clothing are either identically contained in the list of goods of the earlier mark, are included in the broad category of, or overlap with, the earlier bags. Therefore, they are identical.

The contested garment carriers; valises; multi-purpose purses; portmanteaus overlap with the earlier bags. Therefore, they are identical.

b) 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 average.

 

c) The signs

 

KROKO
Earlier trade mark	Contested sign

 

 

The relevant territory is Spain.

 

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 earlier mark is a word mark ‘KROKO, whereas the contested sign is a figurative sign composed of a verbal element, depicted in highly stylised style that can be perceived as ‘kroko’, ’krdkd’ or just stylised elements (non-verbal elements). The Opposition Division will take into account the part of the consumers who will perceive it as ‘kroko’, since from this perspective the signs present more similarities, and it is, therefore, the best scenario for likelihood of confusion to arise. This term does not have any meaning in the relevant territory. It is, therefore, distinctive.

Visually, the signs coincide in ‘KROKO’. However, they differ in the highly stylised typeface of the contested sign.

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

 

Aurally, the signs coincide in the sound of the word ‘KROKO’. They are, therefore, identical.

Conceptually, neither of the signs has a meaning for the public 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.

 

d)   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.

e) Global assessment and conclusion

 

A likelihood of confusion (including a likelihood of association) 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.

It has been established in the previous sections of this decision that the goods at issue have been found to be identical. They are directed at the public at large, whose level of attention is average. The earlier mark has a normal degree of distinctiveness.

In addition, the marks are visually highly similar and aurally identical. The conceptual aspect does not influence the assessment of the similarity of the signs.

Therefore, the differences between the signs are clearly not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish between the marks in dispute for the goods that are identical and will perceive them as having the same origin.

Considering all the above, there is a likelihood of confusion on the part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s National Trademark Registration (Spain) No 3 500 196. 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

 

 

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

Marzena MACIAK

 

 

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.