OPPOSITION Nо B 3 106 693

 

Leroy Sané, Josef-Haumann-Str. 5, 44866 Bochum, Germany (opponent), represented by Schneiders & Behrendt Partnerschaft, Rechts- und Patentanwälte, Huestr. 23 (Kortumkarree), 44787 Bochum, Germany (professional representative) 

 

a g a i n s t

 

Riccardo Dose, Via Vallenoncello, 23, 33170 Pordenone, Italy and Simone Paciello, Via Domenico Quaranta, 3, 80126 Napoli, Italy (applicants), represented by Lunati & Mazzoni S.R.L., Via Carlo Pisacane, 36, 20129 Milano, Italy (professional representative).

On 26/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 106 693 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 105 009 is rejected in its entirety.

 

3.	The applicants bear the costs, fixed at EUR 620.

 

REASONS

 

On 19/12/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 105 009 (figurative mark). The opposition is based on international trade mark registration designating the European Union No 1 390 918 inSané (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, inter alia, the following:

 

Class 9: Cases for mobile phones; cases for smartphones.

Class 18: Luggage, bags, wallets and other carriers; bags for sports; sports packs; beach bags; bags; gentlemen's handbags; toiletry bags; leather and imitations of leather; umbrellas and parasols; backpacks; shoe bags; school knapsacks; satchels; cross-body bags; parasols.

Class 25: Clothing; gym suits; casual wear; tee-shirts; sports jerseys; boots for sports; football shoes; shoes; leisure shoes; headgear; caps (headwear); bathrobes; bath sandals; bath shoes; swim shorts; flip-flops; menswear; jackets (clothing); jackets being sports clothing; jogging pants; shell suits; sweatpants; jogging tops; running shoes; slippers; polo shirts; pullovers; pajamas; protective rainwear; sweatbands; socks; headbands; studs for football boots; beach shoes; stockings; sweat-absorbent stockings; football socks; sweaters; tracksuit bottoms; sweat jackets; sweat shirts; sweat shorts; underwear; sweat-absorbent underwear.

The contested goods are the following:

 

Class 9: Carriers adapted for mobile phones.

Class 18: Bumbags; Backpacks; Casual bags; Handbags.

Class 25: Sweat shirts; Tee-shirts; Undershirts; Trousers; Socks; Footwear; Shoes; Jackets [clothing]; Belts [clothing]; Casualwear; Tops [clothing]; Ladies' clothing; Blousons; Shirts; Bodies [clothing]; Swim wear for gentlemen and ladies; Underwear.

 

Contested goods in Class 9

 

The contested carriers adapted for mobile phones include the opponent´s cases for mobile phones. Therefore, these goods are identical.

 

Contested goods in Class 18

Backpacks are identically contained in both lists of goods.

 

The contested bumbags; casual bags; handbags are included in the opponent´s bags. Therefore, they are identical.

Contested goods in Class 25

Shoes are identically contained in both lists of goods, whereas the contested footwear include the opponent’s shoes. Therefore, these goods are identical.

The rest of the contested goods in this class are various items of clothing. They are all included in the opponent’s broad category of clothing. 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 considered to be average.

 

 

c)  The signs

 

inSané
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).

  

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57).  Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

The contested sign is composed of stylized letters. Admittedly when seen separately from the rest of the letters, its fourth letter would be most likely perceived as the letter ‘V’. However, the preceding two letters and the successive letter are also consonants. Since it is impossible to pronounce four consonants one after another and since consumers when encountering a fanciful stylisation of a verbal element tend to find the easiest way to address it (aurally) based on their common knowledge and previous experience of the market, they tend to perceive a sign beyond its stylisation as string of letters forming a verbal element that could be pronounced. As inverted letters are often used for stylization matters, at least part of the relevant public will perceive the fourth letter of the sign as stylised inverted ‘A’ without the horizontal line and will pronounce the sign as ‘INSANE’. Another part may perceive this letter as ‘U’ and pronounce the sign as ‘INSUNE’.

The earlier mark is a word mark and cannot have dominant elements, as stated by the applicants, because by definition word marks are written in standard typeface. Nevertheless, where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this may not go unnoticed by the relevant public. Indeed, in the present case the relevant public may break down the single word of the earlier mark into two components, namely ‘in’ and ‘Sané’. Even so, the Opposition Division does not concur with the applicants that the average European consumer, who is not expected to have knowledge about German football, will link the second component of the sign with any sportsperson. While such scenario maybe plausible for part of the German general public, it is definitely not the case for the remaining part of the general public in the European Union.

In the present proceedings, the Opposition Division finds it appropriate to focus on the Bulgarian- and Czech-speaking public in the European Union that will pronounce the contested sign as ‘INSANE’, or ‘INSUNE’ and for whom the signs as whole will be meaningless and distinctive, independently if the earlier mark is broken in two components.

Visually, the signs coincide in the letters ‘INS*NE’. They differ, however, in their fourth letters, that is ‘a’ in the earlier mark, whereas in the contested sign this maybe perceived in different ways, as explained above. Further, the signs differ in the stylization of the contested sign and use of upper-case letter and accent in the earlier mark. However, as consumers are accustomed to the stylisation of verbal elements in marks, they will perceive it as merely a decorative depiction of the word elements and will not pay significant attention to these features as indicators of commercial origin. To this extent, the signs in conflict are visually similar to an average degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs will be highly similar for the public that will pronounce the contested sign either as ‘INSANE’, or ‘INSUNE’ since the accent above the letter ‘e’ in the earlier mark may result in slightly different intonation.

 

Conceptually, neither of the signs has a meaning for the relevant public. 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, other arguments and conclusion

 

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 goods are identical. They target the public at large whose degree of attention will be average. The earlier mark has a normal distinctiveness.

As explained in section c) of this decision, the signs are visually similar to an average degree, aurally similar to a high degree, while the conceptual comparison is not possible. The latter means that consumers cannot rely on any conceptual differences in order to safely distinguish between the signs. In fact, the signs coincide in five out of their six letters. The main differences between the signs are confined to the stylisation of the contested sign that is of reduced impact, as explained above. Moreover, the visually most different fourth letter is placed in the middle of the signs between identical string of letters. The irregular capitalization of the earlier mark is immaterial for the relevant public since the eventual split of the mark does not result in any other meaning or emphasis than with the upper case of the letter ‘S’.   

Consumers rarely has the opportunity to make a direct comparison between the different marks, but must place his/her trust in the imperfect recollection of them that he/she has kept in his/her mind (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 03/03/2004, T‑355/02, Zirh, EU:T:2004:62, § 41; 18/04/2007, T‑333/04 & T‑334/04, House of Donuts, EU:T:2007:105, § 44). Given the overwhelming similarities between the signs in conflict, the part of the part that will pronounce the contested sign as ’INSUNE’ is likely to confuse it with the earlier mark that will be pronounced as ‘INSANE’.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. It is common today for companies to make small variations of their brands, for example, by altering their font or color, or by adding terms or elements, to name new product lines or create a modernized version of the brand. In the present case it is very likely that consumers that will pronounce the signs identically as ‘INSANE’ perceive the contested sign as a new version of the previous brand, given the identity of the products in question.

 

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian- and Czech-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

  

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 390 918. 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 applicants are the losing party, they 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

 

 

Irena LYUDMILOVA LECHEVA

Meglena BENOVA

Sofía SACRISTÁN MARTÍNEZ

 

 

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.