OPPOSITION Nо B 3 105 413

 

A.P.G. S.R.L., Via Marco Biagi, 1 Localitá Bonferraro, Sorga' (VR), Italy (opponent), represented by Studio Torta S.P.A., Via Viotti, 9, 10121 Torino, Italy (professional representative) 

 

a g a i n s t

 

Clave Denia, S.A., Cn-332, Km 197, 03760 Ondara (Alicante), Spain (applicant), represented by Garrigues Ip, S.L.P, C/ San Fernando 57, 03001 Alicante, Spain (professional representative).

On 21/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 105 413 is partially upheld, namely for the following contested goods: Class 9: Spectacles, sunglasses, covers for glasses. Class 18: Purses, handbags, cloth bags, rucksacks, suitcases. Class 25: Clothing, footwear, headgear.
2.		European Union trade mark application No 18 089 709 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 some of the goods of European Union trade mark application No 18 089 709 (figurative mark), namely against some of the goods in Class 9 and all the goods in Classes 18 and 25. The opposition is based on Italian trade mark registration No 2 016 000 059 591 (figurative mark) and Italian trade mark application No 2 019 000 036 108 ‘ALÉ’ (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 Italian trade mark registration No 2 016 000 059 591.

a) The goods

 

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

Class 9: Glasses for sport.

Class 18: Backpacks, bags for sports, waist pouches.

Class 25: Cyclists' clothing, cyclists' shoes, T-shirts; polo T-shirts, bicycle gloves, suits, sport stockings, waterproof clothing; overshoes; leggings; sleeves; bandanas; balaclava; tights; underwear. 

The contested goods are the following:

Class 9: Spectacles, sunglasses, covers for glasses.

Class 18: Purses, handbags, cloth bags, rucksacks, suitcases, umbrellas and parasols.

Class 25: Clothing, footwear, headgear. 

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.

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 9

The contested spectacles, sunglasses include, as broader categories, or overlap with, the opponent’s glasses for sport. 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 covers for glasses are similar to the opponent’s glasses for sport as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 18

The contested purses, handbags, cloth bags, rucksacks, suitcases are at least similar to the opponent’s backpacks as they have the same purpose (carrying things). They usually coincide in producer, relevant public and distribution channels.

The contested umbrellas and parasols are dissimilar to all the opponent’s goods in Classes 9, 18 and 25. These goods have a different nature, purpose and method of use. They are not complementary or in competition. Furthermore, they are not provided by the same undertakings and they are distributed through different distribution channels and target a different relevant public.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s cyclists' clothing, t-shirts; polo t-shirts, bicycle gloves, suits, sport stockings, waterproof clothing, leggings; sleeves; bandanas; tights; underwear. 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 footwear includes, as a broader category, the opponent’s cyclists' shoes; overshoes. 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 headwear includes, as a broader category, the opponent’s balaclava. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

 

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 or similar at varying degrees are directed at the public at large. 

 

The degree of attention is considered to be average.

 

 

c) The signs

 

Earlier trade mark	Contested sign

 

The relevant territory is Italy.

 

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 figurative mark which, despite its fairly stylised letters, will be identified as ‘ALE’ or ’ALÉ’ by the relevant public. Indeed, consumers when encountering a fanciful stylisation of a verbal element tend to find the easiest way to address it (aurally) and, based on their common knowledge and previous experience of the market, will tend to perceive a sign beyond its stylisation as a string of letters forming a verbal element.

The contested sign is also a figurative mark consisting of the verbal elements ‘ALE’ and ‘HOP’ linked by a hyphen.

The common verbal element, independently of whether it is identified as ‘ALÉ’ or as ‘ALE’ in the earlier mark, will be perceived by the relevant public as a common expression of incitement, ‘alé’, meaning ‘come on!’. Contrary to the applicant's arguments, the Opposition Division considers that the absence of an accent in the letter ‘E’ will not prevent the relevant public from perceiving the referenced meaning. Nevertheless, it cannot be excluded that part of the relevant public may perceive it as the diminutive of the name ‘Alessandro/Alessandra’ or may not assign it any meaning. In any event, whether meaningful or invented, it has a normal degree of distinctiveness. However, the Opposition Division will not consider these alternative possibilities in the assessment below as this would lead to envisage multiple scenarios, concerning a reduced part of the public, which would have no bearing on the final outcome of the case. There is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused. If a significant part of the relevant public may be confused as to the origin of the goods, this is sufficient.

Therefore, for reasons of procedural economy, the comparison of the signs will be made on the basis of the part of the public that will associate ‘ALÉ/ALE’ with the meaning ‘come on!’.

The additional verbal element ‘HOP’ in the contested sign might be perceived by part of the public as a term of incitement to move or jump. Another part of the public may not attribute any concept to this second component. In any event, whether meaningful or invented, it has a normal degree of distinctiveness.

As neither of the signs designates characteristics of the goods they are of average distinctive character.

The stylisation of the letters and the black rectangular shape in the contested sign are merely decorative (i.e. the typeface being only slightly stylised and the rectangular shape acting only as a background) and, therefore, their visual impact is very limited.

Likewise, contrary to the applicant’s opinion, the stylisation of the earlier mark, although more elaborate, will also be perceived as a mere decoration, because consumers are accustomed to the stylisation of verbal elements in marks. Therefore, the public will not pay significant attention to these features as indicators of commercial origin.

In any case, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

 

Visually and aurally, the signs coincide in the word/sound ‘ALE’, which is the sole verbal element of the earlier mark and the verbal element with higher impact in the contested sign. They differ in the accent in the last letter of the earlier mark ‘É’ (if perceived) and in the hyphen and additional verbal element ‘HOP’ (and its sound), which have no counterpart in the earlier mark.

However, this additional differing word occupies a secondary position within the contested sign since consumers generally tend to focus on the beginning of a sign when they encounter 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 verbal element ‘ALE’ of the contested sign will naturally be the word which has a higher impact.

The hyphen separating the verbal components ‘ALE’ and ‘HOP’ of the contested sign is only a punctuation mark and will not be attributed any particular trade mark significance by the relevant consumers.

The signs further differ visually in the figurative elements and aspects of both signs which, as explained above, are of very limited impact.

The accent in the earlier mark, if perceived, will have an impact in the rhythm and intonation (i.e. the accent in the last letter) at an aural level.

Therefore, and taking into account the conclusions regarding the impact of the elements, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The distinctive element ‘ALE’ (independently of whether it is identified as ‘ALÉ’ or as ‘ALE’ in the earlier mark), included in both signs, will be associated by the relevant public with the meaning explained above. To that extent, the signs are conceptually similar to a high degree.

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, other arguments and conclusion

The goods are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large with an average degree of attention.

The signs are visually and aurally similar to an average degree and conceptually similar to a high degree. The earlier mark has an average degree of distinctiveness.

The earlier mark is entirely contained at the beginning the contested sign, where consumers pay more attention. The differences between the marks are confined to figurative elements and aspects or to elements of reduced impact due to their position within the signs (the accent of the last letter ‘É’, if perceived, in the earlier mark and the hyphen and second verbal element, ‘HOP’, of the contested sign). However, these differences are insufficient to exclude a likelihood of confusion.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T-519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T-260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T-179/11, Seven Summits, EU:T:2012:254,§ 26).

Moreover, in view of the coinciding element, both signs could be perceived as two different product lines coming from the same undertaking or economically-linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

 

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

 

In the present case, the previous cases referred to by the applicant, (28/06/2018, B 2 878 604, Paul/PAUL CASTY, 28/03/2019, B 2 875 006, MIO/MIOMARE and 26/06/2020, B 3 088 697, LOIS/Loiston), are not relevant to the present proceedings. The signs in those cases are not comparable to those in the present case. In the first case there is no likelihood of confusion since the differing additional element of the contested sign is a surname which has a higher intrinsic value as indicator of the origin of goods than the first name. In the remaining two cases the coinciding string of letters, despite being at the beginning of the signs, do not play a distinctive and independent role as in the case at hand.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration. 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees 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.

 

The opponent has also based its opposition on the following earlier Italian trade mark application No 2 019 000 036 108 ‘ALÉ’ (word mark) in Class 25.

Since this application covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

 

 

Rosario GURRIERI

Sofía SACRISTÁN MARTÍNEZ

Helena GRANADO CARPENTER

 

 

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.