OPPOSITION Nо B 3 111 026

Richard Löffler, Große Theaterstraße 7, 20354 Hamburg, Germany (opponent), represented by Daniel Alexander Nitschke, Scheffelstraße 7, 22301 Hamburg, Germany (professional representative)

a g a i n s t

JRPT, Unipessoal Lda, Largo das Hortas, n.º 83, 5.º, 4810-025 Guimarães, Portugal (applicant), represented by Ana Cristina Ribeiro Costa, Av. General Humberto Delgado, 181, 4800-158 Guimarães, Portugal (professional representative).

On 12/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 111 026 is partially upheld, namely for the following contested goods:

Class 18: Bags, wallets and other carriers; pouches; leather purses; ladies’ handbags; gentlemen’s handbags; leather bags and wallets; all-purpose carrying bags; wallets; wallets including card holders; kit bags; wallets of precious metal; leather wallets; business cases; handbags, purses and wallets; evening handbags; bucket bags; daypacks; backpacks; clutch bags; small rucksacks; briefbags; minaudieres; clutches [purses]; multi-purpose purses; handbags; sport bags; casual bags; general purpose sport trolley bags; work bags; beach bags; shoulder bags; rucksacks on castors.

Class 25: All the contested goods in this class.

2. European Union trade mark application No 18 144 618 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 18 144 618 for the figurative mark . The opposition is based on German trade mark registrations No 39 828 471 and No 302 016 021 079 and European Union trade mark registration No 16 252 744, all for the word mark ‘TRAP’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON THE BASIS OF OPPOSITION

According to Article 46(1) EUTMR, the notice of opposition must be filed within a period of three months following the publication of the EUTM application.

According to Article 2(2)(c) EUTMDR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), (5) or (6) EUTMR are fulfilled. In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is checked or if they are indicated in any of its annexes or supporting documents.

According to Article 5(3) EUTMDR, if the notice of opposition does not contain grounds for opposition in accordance with Article 2(2)(c) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

In the present case, the opposition period of the contested application started on 19/11/2019 and expired on 19/02/2020.

On 09/02/2020, the opponent submitted a notice of opposition against the contested application. In relation to the earlier trade marks on which the opposition is based (as listed in ‘Reasons’ above) the opponent indicated only one ground for opposition, namely Article 8(1)(b) EUTMR. The notice of opposition was not accompanied by any additional submissions.

On 16/09/2020 (within the substantiation period), the opponent submitted further facts, evidence and arguments to support his claims. In these submissions, the opponent’s arguments were based on Article 8(1)(b) EUTMR and, additionally, he indicated Article 8(1)(a) EUTMR. Furthermore, the opponent referred to Class 6 in relation to his German trade mark registration No 302 016 021 079 and Classes 7 and 9 in relation to his European Union trade mark registration No 16 252 744.

Insofar as the additional ground of Article 8(1)(a) EUTMR is concerned, the Opposition Division notes that Article 8(1)(a) EUTMR is examined also in the cases in which an opposition is based solely on Article 8(1)(b) EUTMR. In such cases, if the requirements of Article 8(1)(a) EUTMR are met, then the opposition will be dealt under this provision without any examination under Article 8(1)(b) EUTMR. Therefore, the ground of Article 8(1)(a) EUTMR is taken into consideration in the present examination.

However, the opposition is inadmissible for the goods in Class 6 of the opponent’s German trade mark registration No 302 016 021 079 and the goods in Classes 7 and 9 of his European Union trade mark registration No 16 252 744, which were not indicated as a basis of the opposition within the opposition period.

Therefore, the opposition will be examined in relation to Article 8(1)(a)(b) EUTMR and the goods that the opponent expressly mentioned as a basis of his opposition in the notice of opposition of 09/02/2020.

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:

German trade mark registration No 39 828 471

Class 25: Clothing; footwear; headgear.

German trade mark registration No 302 016 021 079

Class 9: Accessories for mobile phones, smartphones, tablets and computers; bags, cases and protective devices for mobile phones, smartphones, tablets and computers; helmets for sports; protective headwear [helmets]; skateboard helmets.

Class 28: Skateboards and their individual parts, namely decks, griptapes, riser pads, axles, hangers, washers, kingpins, bushings, pivots, baseplates, rollers, ball bearings; attachments and hangers for skateboard axles; rails and straps [skateboard accessories]; elbow pads; knee pad; shin guards; protective padding; balls; roller skates; specially adapted sports bags for holding sports equipment; bags for the transport of skateboards and skateboard accessories; fingerboards; games and toys; video game consoles that do not require connection to an external monitor, monitor or television.

European Union trade mark registration No 16 252 744

Class 9: Accessories for mobile phones, smartphones and tablets; bags, shells and protectors for mobile telephones, smartphones, tablets and computers; helmets for use in sports; head protection; skateboard helmets.

Class 28: Skateboards and individual parts therefor; boards, axes, wheels, assembly kits for wheels, carrying straps, grip tapes, replacement parts and riser pads for skateboards; devices designed for securing, displaying and storing skateboards, for mounting on walls, ceilings or other objects, and for positioning on floors or other surfaces; elbow pads; knee pads; shin pads; protective paddings; balls; roller skates; bags for sports especially designed for holding sports apparatus; cases adapted for sporting articles; bags for transporting skateboards and skateboard accessories; fingerboards; games and toys; videogame consoles requiring no connection to an external monitor, display or television.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; travel luggage; wheeled luggage; pouches; trunks [luggage]; leather purses; ladies’ handbags; gentlemen’s handbags; hat boxes for travel; travel baggage; leather bags and wallets; all-purpose carrying bags; wallets; wallets including card holders; hat boxes of leather; travelling sets [leatherware]; kit bags; wallets of precious metal; leather wallets; roller suitcases; carry-on suitcases; business cases; overnight cases; suitcases; handbags, purses and wallets; evening handbags; bucket bags; daypacks; suitcases; trunks and travelling bags; backpacks; clutch bags; small rucksacks; carriers for suits, shirts and dresses; briefbags; minaudieres; clutches [purses]; multi-purpose purses; handbags; weekend bags; sport bags; carry-on bags; casual bags; general purpose sport trolley bags; travelling bags; work bags; beach bags; shoulder bags; rucksacks on castors; travelling sets; garment bags for travel.

Class 25: Clothing; shorts; kerchiefs [clothing]; beach wraps; jackets [clothing]; tops [clothing]; ready-to-wear clothing; ascots; gabardines [clothing]; knitwear [clothing]; belts [clothing]; mufflers [clothing]; jumpers; topcoats; combinations [clothing]; rainproof clothing; furs [clothing]; cowls [clothing]; denims [clothing]; slips [underclothing]; gloves [clothing]; veils [clothing]; bodies [clothing]; casualwear; embroidered clothing; underwear; clothing for gymnastics; nightwear; children’s wear; infant wear; mackintoshes; swimming costumes; sportswear; beachwear; maternity clothing; menswear; knitwear [clothing]; ladies’ clothing; leather clothing; leisurewear; formalwear; party hats [clothing]; formal evening wear; baby clothes; headbands [clothing]; weatherproof clothing; womens’ outerclothing; bandeaux [clothing]; bridesmaids wear; roll necks [clothing]; sportswear; ready-to-wear clothing; headbands [clothing]; headbands [clothing]; swim wear for gentlemen and ladies; clothing for men, women and children; sports clothing [other than golf gloves]; underwear; lingerie; footwear; headgear; bonnets [headwear]; hats; beach hats; ski hats; sports caps and hats; rain hats.

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).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 18

The opponent’s clothing in Class 25 of German trade mark registration No 39 828 471 is used to cover the human body and protect it against the elements. Items of clothing also serve as articles of fashion.

The contested bags, wallets (listed three times) and other carriers; pouches; leather purses; ladies’ handbags; gentlemen’s handbags; leather bags; all-purpose carrying bags; wallets including card holders; kit bags; wallets of precious metal; leather wallets (listed twice); business cases; purses; evening handbags; bucket bags; daypacks; backpacks; clutch bags; small rucksacks; briefbags; minaudieres; clutches [purses]; multi-purpose purses; handbags (listed twice); sport bags; casual bags; general purpose sport trolley bags; work bags; beach bags; shoulder bags; rucksacks on castors in Class 18 are related to the opponent’s clothing in Class 25 covered under German trade mark registration No 39 828 471. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing (including sports clothing), since they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered to be similar.

However, the remaining contested luggage; travel luggage; wheeled luggage; trunks [luggage]; hat boxes for travel; travel baggage; hat boxes of leather; travelling sets [leatherware]; roller suitcases; carry-on suitcases; overnight cases; suitcases (listed twice); trunks; carriers for suits, shirts and dresses; weekend bags; carry-on bags; travelling bags (listed twice); travelling sets; garment bags for travel are considered dissimilar to the opponent’s clothing in Class 25 covered under German trade mark registration No 39 828 471. All these contested goods are for carrying things when travelling or for storing things and do not satisfy the same needs as clothing or the opponent’s remaining goods in Class 25. They do not have the same retail outlets and are not usually made by the same manufacturers. Moreover, the goods are neither in competition nor complementary. Although, nowadays, designers also sell travel accessories under their marks, this is not the rule and rather applies only to (economically) successful designers.

The abovementioned contested goods are also dissimilar to the opponent’s remaining goods in Class 9 (i.e. different accessories including bags for mobile phones, smartphones, tablets and computers and protective headwear) and Class 28 (i.e. skateboards, their parts and accessories, including protective equipment, as well as balls, roller skates, bags and cases for sports and sporting articles, games, toys and videogame consoles) covered under German trade mark registration No 302 016 021 079 and European Union trade mark registration No 16 252 744. Although some of the opponent’s goods in these classes are also bags, this is in itself insufficient for finding a similarity. This is because the opponent’s bags in Classes 9 and 18 are specifically designed to fit and carry electronic devices or sporting equipment. Therefore, their purpose is different to that of the contested goods. Contrary to the opponent’s opinion, these goods are offered through different distribution channels, given that, for example, bags and cases for electronic devices such as mobile phones or laptops or bags for sporting equipment are usually sold with the goods for which they are designed. Furthermore, they are neither complementary nor in competition and they satisfy different consumer needs, which means that the relevant public does not coincide.

The abovementioned contested goods are even more different from the remaining opponent’s goods covered by the earlier trade marks such as accessories for mobile phones, smartphones and tablets; helmets for use in sports; head protection; skateboard helmets in Class 9 or skateboards and individual parts therefor; elbow pads; knee pads; shin pads; protective paddings; balls; roller skates; fingerboards; games and toys; videogame consoles requiring no connection to an external monitor, display or television in Class 28 (covered under European Union trade mark registration No 16 252 744 and, in identical or similar wording, under German trade mark registration No 302 016 021 079).

On the basis of the above, the contested luggage; travel luggage; wheeled luggage; trunks [luggage]; hat boxes for travel; travel baggage; hat boxes of leather; travelling sets [leatherware]; roller suitcases; carry-on suitcases; overnight cases; suitcases (listed twice); trunks; carriers for suits, shirts and dresses; weekend bags; carry-on bags; travelling bags (listed twice) travelling sets; garment bags for travel are dissimilar to all of the opponent’s goods in Classes 9, 25 and 28, covered by the respective earlier trade marks.

Contested goods in Class 25

All of the contested goods in this class are identical to the opponent’s clothing; footwear; headgear respectively, covered under German trade mark registration No 39 828 471, either because they are identically contained in both lists (i.e. clothing; footwear; headgear) or because the opponent’s clothing, footwear or headgear include, as broader categories, the contested goods.

Given that the identity and similarity between the goods has been found only with respect to the goods covered by German trade mark registration No 39 828 471, the opposition will proceed only on the basis of this earlier trade mark.

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 are directed at the public at large.

The degree of attention is average.

c) The signs

TRAP
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word mark consists of the verbal element ‘TRAP’, which has no meaning for the public in the relevant territory, and neither party has argued otherwise. Therefore, it is distinctive to a normal degree for the relevant goods.

The contested sign is a figurative mark consisting of the words ‘LE TRAP’, written in fine black upper-case letters above the words ‘TRAVEL ACCESSORIES’, depicted in much smaller black upper-case letters. The stylisation of the verbal elements of the sign is rather standard, with only the letter ‘A’ in the word ‘TRAP’ depicted in an unusual way, that is its horizontal line is replaced by a dot.

The word ‘LE’ of the contested sign as such is meaningless for the relevant public. However, given that it precedes the word ‘TRAP’, the whole expression ‘LE TRAP’ may be perceived as coming from French. Therefore, the abovementioned findings regarding the perception and distinctiveness of the verbal element ‘TRAP’ are equally applicable to the whole expression ‘LE TRAP’.

The expression ‘TRAVEL ACCESSORIES’ will be understood, at least by a part of the relevant public, as referring to, for example, supplementary or accompanying items to be used for or during travelling. Given that the relevant goods in Classes 18 and 25 are not essentially connected with travelling, this expression has a normal degree of distinctiveness for these goods. This also applies for the part of the public that will perceive both words of this expression as meaningless.

The stylisation of the contested sign’s verbal elements will not distract the consumer’s attention from the words themselves. It has only a decorative function within the sign and, therefore, its impact on the assessment of likelihood of confusion is reduced. In addition, 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).

The earlier mark has no dominant element as it is a word mark. In the contested sign, the expression ‘LE TRAP’ is depicted at the top of the sign and is considerably larger than the other element, ‘TRAVEL ACCESSORIES’. Therefore, the expression ‘LE TRAP’ is the visually dominant element of the sign.

Visually, the signs coincide in the distinctive verbal element ‘TRAP’, which is the whole of the earlier mark. They differ in the additional verbal elements of the contested sign, ‘LE’ and ‘TRAVEL ACCESSORIES’, where the latter is the non-dominant element of the sign.

Furthermore, the signs differ in the figurative aspects of the contested sign, which, however, are secondary and have very little (if any) weight in the comparison of the signs, for the reasons given above.

In view of the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive verbal element ‘TRAP’, present identically in both signs and constituting the earlier mark in its entirety.

The pronunciation of the signs differs in the sound of the additional verbal element ‘LE’ of the contested sign.

The contested sign’s verbal element ‘TRAVEL ACCESSORIES’ is unlikely to be pronounced by the relevant public due to its size and secondary position within the sign, since consumers generally only refer to the dominant elements in trade marks and tend to shorten marks containing several words. Therefore, the contested sign will be referred to aurally only by the words ‘LE TRAP’.

Considering all the above, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for a part of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

Another part of the public in the relevant territory may perceive only the meaning of the expression ‘TRAVEL ACCESSORIES’ in the contested sign, as explained above. Since the earlier mark will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

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 his 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 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. Those found to be identical or similar target the public at large, who have an average degree of attention. The earlier mark has a normal degree of inherent distinctiveness for the relevant goods.

The signs in dispute are visually similar to an average degree, aurally similar to a high degree and conceptually not similar or conceptually neutral, as explained in detail in section c) of this decision.

The similarities between the signs result from the fact that the earlier mark’s sole element is completely reproduced in the contested sign in which it plays an immediately perceptible and distinctive role. Moreover, it is the co-dominant element of the contested sign.

Furthermore, some of the differentiating elements of the contested sign have less weight in the comparison of the signs, for the abovementioned reasons. Consequently, the differences between the signs are not sufficient to counteract their similarities and to exclude the likelihood of confusion.

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/services covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them in order to denote a new product and/or service line or to endow a trade mark with a new fashionable image.

In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is indeed very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Therefore, it is conceivable that the relevant public, who have an average degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking, under the ‘TRAP’ brand.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the public in the relevant territory and, therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 39 828 471.

It follows from the above that the contested sign must be rejected for the goods found to be identical or similar to the opponent’s goods.

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 his opposition on German trade mark registration No 302 016 021 079 and European Union trade mark registration No 16 252 744, both for the word mark ‘TRAP’. However, as seen above, the goods they cover are dissimilar to the remaining contested goods in Class 18. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on ground under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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

Solveiga BIEZA

Martin MITURA

Benoit VLEMINCQ

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.