OPPOSITION Nо B 3 098 866

 

LCS International SAS, 8 rue Adolphe Seyboth, 67000 Strasbourg, France (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Malika Mouatik, Camp Morvedre, 30, 46730 Gandía, Spain (applicant).

On 14/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 098 866 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 093 800 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 093 800 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 5 238 407 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR and 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.

 

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 above mentioned European Union trade mark registration No 5 238 407.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear (except orthopaedic footwear), belts, gloves (clothing), scarves, headscarves, headgear, braces, belts.

The contested goods are the following:

Class 25: Headgear; footwear; clothing.

 

Headgear; clothing are identically contained in both lists of goods.

Orthopaedic footwear is classified in Class 10, so the category of the contested footwear covers the same scope of goods as the opponent’s footwear (except orthopaedic footwear). These goods are, therefore, 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 considered to be average.

 

c) The signs

 

Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

 

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 trade marks contain depictions of cocks, which are distinctive for the goods at issue.

The contested sign also contains, under the figurative element, a rectangular frame, i.e. a very simple geometrical shape; consumers do not usually attribute any trade mark significance to such shapes (15/12/2009, T 476/08, Best Buy, EU:T:2009:508, § 27). Therefore, the rectangular frame is considered non-distinctive. Finally, below the frame, the sign contains the verbal element ‘WTJ’ in bold standard uppercase typeface, which is meaningless and, therefore, distinctive.

Where a sign consists of both figurative and word elements, it does not automatically follow that the word element must always be considered to be dominant. In the case of a composite mark, the figurative element may rank equally with the word element (12/11/2015, T‑450/13, Wisent / Żubrówka Bison Brand Vodka, EU:T:2015:841 § 74 and the case-law cited therein). In the present case, the representation of a cock in the contested sign is, as a result of its shape, size, position and peculiar depiction, easily perceptible visually and clearly helps to establish the image of the sign that the relevant public will retain in its mind. Furthermore, the rectangular frame, although non-distinctive, is not much smaller and it is located in a central position. Consequently, the contested sign has no elements that could be clearly more dominant (eye-catching) than other elements.

Visually, the marks are similar to the extent that they both consist of a similarly stylised silhouette of a cock turned leftwards, facing slightly upwards and with almost identical feather tails. Even though the depictions are not identical (the cock in the contested sign is represented in black and white, rendering a more detailed depiction, whereas the representation in the earlier mark is a black silhouette), there is undoubtedly a certain degree of similarity between them and in the consumer’s perception.

The signs differ in the additional elements in the contested sign, namely the rectangular frame, which however is non-distinctive, and the distinctive verbal element ‘WTJ’. As noted above, while often the verbal elements have more impact on consumers than the figurative elements, in this case the cock device is neither banal nor commonplace and in fact is visually eye-catching, therefore it plays a role in the overall impression of the contested sign which is, at least, as relevant as that of the verbal element. In addition, the verbal element is very short and depicted in a standard typeface, while it certainly attracts visual attention per se, it is not large enough to overshadow the cock, which still remains clearly visible (03/03/2020, R 2209/2019-1, DEVICE OF A TURTLE (fig.) / DS (fig.) et al., § 29).

Therefore, the signs must be considered visually similar to a below average degree.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs contain the concept of a cock. The differences between the stylisations of the cocks do not prevent their conceptual identity (17/04/2008, T‑389/03, Pelikan (Representation of a pelican), EU:T:2008:114, §§ 90-92). The mere fact that the mark applied for also contains a verbal element which has no meaning for the relevant public does not make it conceptually different overall from the earlier mark (12/11/2015, T‑450/13, Wisent / Żubrówka Bison Brand Vodka, EU:T:2015:841 § 128; 20/10/2011, T‑238/10, Horse Couture, EU:T:2011:613, § 40). Therefore, the signs are conceptually highly similar.

 

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.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In the present case, the contested and the opponent´s goods are identical. The relevant public is the public at large with an average degree of attention.

In cases where the goods are identical the conflicting signs must maintain a sufficient distance from each other (29/01/2013, T-283/11, Nfon, EU:T:2013:41, § 69; 28/04/2014, T-473/11, Menochron, EU:T:2014:229, § 46). The differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them.

The signs are visually similar to a below average degree and they are conceptually highly similar. Aural comparison between them is not possible. The fact that the cock depictions in the signs differ in certain details does not prevent them, and the signs as a whole, from producing similar impressions. Both represent silhouettes of cocks in a very similar stance. It should be kept in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, it is likely that certain differences in details, such as the cock’s legs in the contested sign, will go unnoticed and will not be recalled. The differences in the remaining elements of the contested sign are not striking nor sufficient to exclude a likelihood of confusion between them. In particular, the differing verbal element ‘WTJ’ is short, composed of three letters only, and its typeface is standard. In addition, the depiction of a cock has its own distinctive character within the contested mark (03/03/2020, R 2209/2019-1, DEVICE OF A TURTLE (fig.) / DS (fig.) et al., § 51).

Moreover, 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). In the present case, the identity between all the goods at issue offsets the lesser degree of visual similarity between the signs.

Therefore, the overall impression produced by the signs is that they are similar.

It is common in the fashion sector for the same mark to be configured in various ways according to the type of product which it designates, for example by altering the font or colours, or by adding verbal or figurative elements to endow them with a new, modern image. It is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49; 15/10/2015, T-642/13, she (fig.) / SHE et al.). Indeed, the relevant consumers are likely to think that the contested sign is a sub-brand of the earlier mark to the extent that it offers another line of fashion articles designated, principally, by the depiction of a cock’s silhouette.

 

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 European Union trade mark registration No 5 238 407. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As this earlier right 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).

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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, she 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

 

 

Jakub MROZOWSKI

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.