OPPOSITION Nо B 3 105 533

 

S.C. Adesgo S.A., Calea Șerban Vodă, 220, sector 4, 040207 Bucharest, Romania (opponent), represented by S.C. Weizmann Ariana & Partners Agentie De Proprietate Intelectuala S.R.L., Vivando Building 51 11 iunie street, 1th floor, offices 14-15 sector 4, 040171 Bucharest, Romania (professional representative) 

 

a g a i n s t

 

Mascot International A/s, Silkeborgvej 14, Pårup, 7442 Engesvang, Denmark (applicant), represented by Patrade A/s, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative).

On 23/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 105 533 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 107 112 is rejected in its entirety.

 

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

 

REASONS

 

On 09/12/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 107 112 (figurative mark), namely against all the goods in Classes 9 and 25. The opposition is based Romanian trade mark registration No 133 876 (figurative 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 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 9: Protective clothing, including protective industrial shoes.

Class 25: Clothing; belts; footwear and headgear, including for workers. 

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

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 25

 

Clothing; headgear; footwear are identically contained in both lists.

The contested belts are included in the opponent’s broader category of clothing. Therefore, they are identical.  

Contested goods in Class 9

The contested protective clothing (including protective industrial shoes) is similar to a low degree to the opponent’s clothing in Class 25 as they usually coincide in producer, relevant public and distribution channels.

 

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 to a low degree are directed at the public at large and also to the professional public, when it comes to specialised goods such as protective clothing addressed to professionals.

The degree of attention is considered to be average to higher, since part of the goods in question (protective clothing) reduce the likelihood of injuries and/or illnesses in the working environment (or when performing leisure or sporting activity), therefore they might be chosen after some consideration.

  

c) The signs

 

Earlier trade mark	Contested sign

 

The relevant territory is Romania.

 

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 figurative mark comprises the verbal elements ‘DIAMOND’ and ‘BY ADESGO’. The element ‘DIAMOND’ is to be understood by at least part of the relevant Romanian-speaking public as meaning ‘diamond’, since it is very close to the equivalent word in the official language in the relevant territory (Romanian: ‘diamant’). When it comes to the diamond-shaped letter ‘O’ within the word ‘DIAMOND’, it will only enhance the notion of ‘DIAMOND’ for the public. Bearing in mind the nature of the goods in question, this verbal element, as well as the diamond-shaped figurative element, are distinctive for those goods. The word ‘by’ being a basic English term, will be understood by the relevant public. When followed, as in this case, by another word, the two elements will be perceived together - ‘BY ADESGO’, This expression will be understood as a reference to a business name and as such indicating the commercial origin of the goods, hence it is distinctive.

Due to its position, stylisation (in bold) and size, the verbal element ‘DIAMOND’ is the dominant element within the earlier mark.

The contested figurative mark includes the verbal elements ‘DIAMOND’ and ‘FIT’ and a figurative element depicting a diamond that appears inside a black-lined geometrical shape and against a grey background. The previous assertions when it comes to the meaning and the distinctiveness of the word ‘DIAMOND’ within the earlier mark are applicable in the case of the contested sign as well. Regarding the verbal element ‘FIT’, its meaning in the language of the relevant territory is irrelevant to the goods in question. More precisely, this term in the language of the relevant territory means ‘to be absent from duty, especially from school hours’, however, only when it is used as a part of the expression ‘a trage la fit’ (information extracted from Dexonline on 16/03/2020 at https://dexonline.ro/definitie/fit), and is therefore distinctive for the goods in question. Due to this meaning, the element ‘FIT’ will not be perceived by the relevant public as a semantic unit along with the verbal element ‘DIAMOND’, contrary to what is claimed by the applicant. Moreover, it is a rather colloquial expression and only a part of the relevant public will indeed understand it. Lastly, the diamond-shaped figurative element only enhances the meaning conveyed by the word ‘DIAMOND’, and is, thus, also distinctive for the relevant goods.

The contested sign has no element that could be considered clearly more dominant than other elements. 

Visually, the signs coincide in the verbal element ‘DIAMOND’. However, they differ in the elements ‘BY ADESGO’, present within the earlier mark, and in ‘FIT’, present within the contested sign. Furthermore, the two marks also differ in the presence of the figurative elements within them. However, 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). What is more, 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. For these reasons, the signs are visually similar to at least a low degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the element ‛DIAMOND’, present identically in both of them. The pronunciation differs in the sound of the additional elements ‛BY ADESGO’ of the earlier mark, and ‘FIT’ in the contested sign. The figurative elements of the marks will not be pronounced, and thus do not play a role in the assessment of the aural similarity of the signs. In addition, it must be noted that consumers have a natural tendency to shorten long signs when pronouncing them. Due to its position and also smaller size, it is very likely that the verbal element ‘BY ADESGO’ will be not pronounced in the earlier mark (see by analogy T‑546/12, pensa, EU:T:2015:355, 30/11/2006; T-43/05, Brothers by Camper, EU:T:2006:370, § 75). Therefore, the signs are aurally similar to at least an average degree.

  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the presence of the additional elements, namely the business name ‘BY ADESGO’ within the earlier mark and by the verbal element ‘FIT’ within the contested sign, the concept of ‘DIAMOND’ conveyed by the common verbal element along with the figurative diamond-shaped elements in the signs will be still perceived. This results to an average degree of conceptual similarity between 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).

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.

As previously established, the goods in comparison have been found partly identical and partly similar to a low degree.

The relevant public is the public at large and the professional public and the degree of attention is deemed to range from average to higher.

When it comes to the signs at issue, they coincide in a distinctive verbal element ‘DIAMOND’, which is placed in the beginning of the signs. While there are some dissimilarities in the figurative elements of each mark, they both convey the concept of a diamond. The additional verbal elements within the earlier mark (which are likely not to be pronounced by the consumers) and the second verbal element of the contested sign do not suffice to exclude a likelihood of confusion between the two signs.

On account of the particular configuration of the earlier mark, the consumer will perceive the elements ‘DIAMOND’ and ‘BY ADESGO’ independently, as each indicating an aspect of the commercial origin of the goods or services designated by it (e.g. a business name and a mark designating the product line).

Taking into consideration that it is not uncommon for producers to create lines of products by omitting or adding elements to their main mark, in order to differentiate categories of products, the Opposition Division finds that the relevant consumer, even the attentive professional, may perceive the contested sign as a sub-brand, as both marks have a distinctive element ‘DIAMOND’ in common (see by analogy the judgment of 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the public may attribute the same (or an economically linked) commercial origin to all the goods at issue that are identical, and even to those which are similar to a low degree.

 

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

  

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 133 876. 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

 

 

Renata COTTRELL

Birgit CESSY FILTENBORG

Lucinda CARNEY

 

 

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.