OPPOSITION No B 3 094 526

Monkey IP Limited, Unit 8A, Plaxton Park, Scarborough YO11 3BY, United Kingdom (opponent), represented by Freeths LLP, Colmore Plaza, 20 Colmore Circus, Birmingham B4 6AT, United Kingdom (professional representative)

a g a i n s t

Souvenir Clubbing S.R.L., Via Santa Gonda, 43, 59100 Prato, Italy (applicant), represented by Bugnion S.P.A. Via A. Gramsci, 42, 50132 Firenze, Italy (professional representative).

On 26/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 526 is partially upheld, namely for the following contested goods:

Class 18: Key cases; casual bags; beach bags; sport bags; vanity cases, not fitted; purses; wallets; backpacks; bags for sports clothing; holdalls for sports clothing; pouches for holding make-up, keys and other personal items; satchels; pouch baby carriers.

Class 25: All the contested goods.

2. European Union trade mark application No 18 062 008 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 18 062 008 for the figurative mark . The opposition is based on, inter alia, United Kingdom trade mark registration No 3 202 302 for the word mark ‘SS’. 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 United Kingdom trade mark registration No 3 202 302.

a) The goods

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

Class 25: Clothing, footwear, headgear; arm warmers [clothing]; athletic pants; athletic shirts; athletic shorts; baselayer bottoms; baselayer tops; blue jeans; bottoms [clothing]; bottoms for adults; bottoms for men; business wear; capri pants; cardigans; cargo pants; casual wear; clothing; clothing for men; clothing of artificial fur; clothing of leather or imitations of leather; coats; coats for men; coats made of cotton; cotton jackets; cotton sweaters; denim jackets; denim clothing; denim coats; denims; dress shirts; evening wear; fleece bottoms; fleece jackets; fleece pullovers; footwear for men; formal pants; formal wear; fur jackets; golf shirts; golf shorts; golf trousers; graphic t-shirts; headbands being clothing; headgear for wear; heavy coats; heavy jackets; hooded pullovers; hooded sweatshirts; hooded tops; hoods [clothing]; jeans; jerseys [clothing]; jogging tops; knit bottoms; knit jackets; knit shirts; knit tops; linen clothing; long-sleeved jackets; long-sleeved shirts; long-sleeved sweaters; long-sleeved t-shirts; outerclothing; outerclothing for men; overcoats; overshirts; overtrousers; pockets for clothing; polo knit tops; polo shirts; rain jackets; ramie shirts; sheepskin jackets; sheepskin clothing; shirts; shirts for men; shirts for adults; shirts for wear with suits; shorts; short sets [clothing]; shorts for men; short-sleeved jackets; short-sleeved sports shirts; short-sleeved sweaters; short-sleeved t-shirts; short-sleeved undershirts; short-sleeve shirts; short trousers; sleeveless jackets; sport shirts; sports jerseys; sports shirts; stretch pants; suit jackets; suit pants; suede jackets; sweaters; sweaters for adults; sweaters for men; sweatpants; sweatpants for men; sweatshirts; sweat shorts; tank tops; tops [clothing]; tops for adults; tops for men; tracksuits; track jackets; trousers; trousers for adults; trousers for men; vests; vest tops; v-neck sweaters; waterproof clothing; woollen clothing; wool sweaters; wool jackets; work clothing; baseball jerseys; baseball t-shirts; baseball jackets; hockey jerseys; sleeveless tops; longsleeve tops; hoodies; trousers; pants; shorts; sweaters; jumpers; pullovers; jackets; gilets; parkas; bomber jackets; knitwear; gym clothing; scarves; gloves; hats; polo shirts; tracksuit jackets; tracksuit trousers; jogging bottoms; leggings; caps; beanies; bobble hats; skirts; dresses; blouses; crop tops; bandeau tops; swimwear; winter sports wear; underwear; shoes; trainers; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 18: Leather, unworked or semi-worked; key cases; casual bags; beach bags; sport bags; vanity cases, not fitted; trunks [luggage]; travelling sets [leatherware]; purses; suitcases; umbrellas; parasols; wallets; attaché cases; backpacks; bags for sports clothing; holdalls for sports clothing; pouches for holding make-up, keys and other personal items; satchels; collars for animals; imitation leather; pouch baby carriers.

Class 25: Clothing; children's wear; tee-shirts; shirts; trousers; denim jeans; skirts; clothing for gymnastics; gowns; socks; stockings; swimming costumes; cardigans; bathrobes; jackets [clothing]; blousons; bodices [lingerie]; hats; topcoats; coats; mackintoshes; sashes for wear; belts [clothing]; neckties; gloves [clothing]; footwear; berets; underwear; bikinis; bomber jackets; breeches; short-sleeve shirts; aloha shirts; hoods [clothing]; headgear; tights; men's suits; sundresses; tap pants; sweat shirts; knee-high stockings; garters; aprons [clothing]; hosiery; sweaters; deck shoes; negligees; lounge pants; mules; beach wraps; parkas; pelisses; pyjamas; polo shirts; stocking suspenders; brassieres; sandals; boots; skirt suits; tops [clothing]; combinations [clothing]; evening wear; foulards [clothing articles].

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

Clothing, footwear and headgear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. Goods such as bags, handbags, purses, key cases, etc. in Class 18 are related to articles of clothing, headgear and footwear in Class 25. This is because they are likely to be considered by consumers as auxiliary goods or aesthetically matching accessories. For this reason, they are offered side-by-side in the same places targeting the same public, and it is not unusual for clothing manufacturers to directly produce and market them.

Therefore, the contested key cases; casual bags; beach bags; sport bags; vanity cases, not fitted; wallets; purses; backpacks; bags for sports clothing; holdalls for sports clothing; pouches for holding make-up, keys and other personal items; satchels in Class 18, which include different types of bags, wallets and cases, and the opponent’s goods clothing, footwear, headgear in Class 25 are considered at least similar to a low degree. They can coincide in distribution channels, public and producers.

The contested pouch baby carriers are similar to a low degree to the opponent’s clothing in Class 25 as they may be manufactured by the same companies and coincide in distribution channels and target public.

However, the contested trunks [luggage]; travelling sets [leatherware]; suitcases; attaché cases are large packing cases or boxes that clasp shut, used for carrying things as luggage or for storage. These goods are considered dissimilar to the opponent’s goods, which are clothing, headgear and footwear goods and parts and fittings thereof. They serve very different purposes (carrying things when travelling/storage versus covering/protecting the human body). Moreover, contrary to the comparison with bags, these carriers are not regarded as complementary accessories to articles of clothing, footwear and headgear. They are not sold in the same retail outlets and are not usually made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

The contested leather, unworked or semi-worked; imitation leather refer to the skins of various kinds of animals (or imitations thereof). These are raw or semi-worked materials. The fact that one product is used for manufacturing another (for example, leather for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The contested goods are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods which all are clothing, headgear and footwear goods. Therefore, these goods are dissimilar.

Umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; collars for animals are bands of leather or plastic used for animals. The nature of these goods is very different from the opponent’s clothing, headgear and footwear goods in Class 25. They serve very different purposes (protection from rain/sun, aid in the control of animals versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. Therefore, these goods are dissimilar.

Contested goods in Class 25

The contested clothing; footwear; headgear are identically contained in both lists of goods.

The contested children's wear; tee-shirts; shirts; trousers; denim jeans; skirts; clothing for gymnastics; gowns; socks; stockings; swimming costumes; cardigans; jackets [clothing]; blousons; bodices [lingerie]; topcoats; coats; mackintoshes; sashes for wear; belts [clothing]; neckties; gloves [clothing]; underwear; bikinis; bomber jackets; breeches; short-sleeve shirts; aloha shirts; hoods [clothing]; tights; men's suits; sundresses; tap pants; sweat shirts; knee-high stockings; garters; hosiery; sweaters; negligees; lounge pants; beach wraps; parkas; pelisses; pyjamas; polo shirts; stocking suspenders; brassieres; skirt suits; tops [clothing]; combinations [clothing]; evening wear; foulards [clothing articles] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

The contested hats; berets are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested bathrobes; aprons [clothing] are similar to the opponent’s clothing as they usually coincide in producer, relevant public, distribution channels and method of use.

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 and similar to varying degrees are directed at the public at large. The degree of attention is considered to be average.

c) The signs

SS
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 the word mark, ‘SS’.

The contested sign is a figurative mark consisting of the letters ‘SS’ in a stylised handwritten typeface in upper case, with the letters partly overlapping each other at the bottom. As regards the figurative component of the contested sign (the handwritten typeface) it is considered that despite displaying some level of fancifulness, it will be perceived by the consumers essentially as an ornamental element in the sign, i.e., a mere graphic stylisation resource, meant to embellish the commercial sign at issue. Indeed, the presence of such ornamental elements is common on the marketplace, where they are used to embellish and draw the attention of consumers to the verbal elements of trade marks. Therefore, the figurative component of the contested sign will have a very limited impact on the public, as an indicator of a particular commercial origin. The letters ‘SS’ remains clearly legible and will be the one to which consumers refer to and attribute more trade mark significance.

The signs fully coincide in their sole verbal element ‘SS’, notwithstanding the different typeface in the contested sign. For a substantial part of the public this element will be associated with a notorious military organization that was defeated at the end of World War II. For the remainder, the verbal element ‘SS’ will be perceived purely as a combination of letters which is meaningless in connection with the goods. In any case, the verbal element ‘SS’ is distinctive to a normal degree in relation to the goods at issue, since it has no connection to them. However, the question of the distinctiveness of the signs’ verbal element is immaterial in the present case since it is the same in both marks and since the only differentiating elements of the contested sign merely reside in the typeface.

It follows from the above that the signs are visually similar to a below average degree, aurally identical, and conceptually either identical, if a meaning were assigned to the common element ‘SS’, or if not, the conceptual aspect would not influence this assessment.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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, 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 and 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 partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods. Those found to be identical or similar target the public at large whose degree of attention is average. The earlier trade mark has a normal degree of inherent distinctiveness.

According to settled case-law, generally speaking 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 degree of visual similarity between signs designating goods in Class 25 is particularly relevant when assessing the likelihood of confusion between them, which, in the present case, was considered below average. However, 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). Likewise, the below average degree of visual similarity may be compensated by the aural and conceptual similarities (even identity) between the signs.

In the present case, the signs are aurally identical and conceptually identical at least for a substantial part of the relevant public, as explained above in section c) of this decision. Hence, bearing in mind that an aural communication in relation to the goods in question is not excluded, it is considered that due to such aural and conceptual identity between the signs for at least part of the consumers, the marks could be confused despite the below average degree of visual similarity. Indeed, the signs have the verbal element ‘SS’ in common, and only differ in the typeface of the contested sign. In this regard, it should also be noted that it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is, indeed, possible that the average consumer, whose degree of attention is average, may be led to believe that the same undertaking is responsible for the production of the goods found to be identical or similar.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion (including likelihood of association) on the part of the public, and even for goods that have been found to be similar to only a low degree. Therefore, the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 202 302.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar at least to a low degree 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.

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 the goods are obviously not identical.

The opponent has also based its opposition on the European Union trade mark registration No 12 148 987 for the figurative mark

, registered for goods and services in classes 18, 24, 25 and 35.

This earlier mark is much less similar to the contested sign than the earlier mark analysed above. The opponent claims that the sign contains the letters ‘SS’. However, the Opposition Division is of the view that it is a purely figurative sign, consisting of several curved lines in black that are intersecting, forming altogether an abstract device. Admittedly, a slight similarity in the curved lines placed at its right-hand side might be perceived which consumers could think of as being a very fanciful letter ‘S’. In this regard, in the event that such letter were perceived in the earlier mark, ultimately the signs would be visually similar and aurally similar only to a low degree, at most, due to the coincidence in the letter ‘S’. Conceptually, they would not be similar because the earlier mark would have the concept of the letter ‘S’ for the relevant public, or even dissimilar, if the public understands a meaning on the contested sign ‘SS’. Even assuming that the goods might be identical, these low visual and aural similarities would not be sufficient to give rise to a likelihood of confusion with this earlier right as far as the remaining goods are concerned.

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

Begoña VALIENTE URIARTE

Martin INGESSON

Kieran HENEGHAN

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.