OPPOSITION No B 3 110 032

El Corte Inglés, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Kim Wenting handelend onder de naam Mountain District, Meerkoet 11, 3972RG Driebergen-Rijsenburg, the Netherlands (applicant), represented by Merkenspot, Savannahweg 17, 542AW Utrecht, the Netherlands (professional representative).

On 20/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 110 032 is upheld for all the contested goods.

2. European Union trade mark application No 18 154 216 is rejected in its entirety.

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

REASONS

On 28/01/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 154 216 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 13 102 868 (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.

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 aforementioned European Union trade mark registration No 13 102 868, which was not subject to proof of use requirement.

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 25: Clothing; hats; footwear.

The contested clothing and footwear are identically contained in both lists of goods.

The contested hats are included in the opponent’s broad category of headgear. 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 (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the goods found to be identical are directed at the public at large.

In general, the public’s degree of attention is average in relation to the goods in Class 25 (21/01/2010, T‑309/08, G Stor, EU:T:2010:22, § 25; 11/01/2013, T‑568/11, interdit de me gronder IDMG, EU:T:2013:5, § 30).

The wording of the compared lists of goods in Class 25 does not indicate any specific qualities of the goods concerned. In addition, neither the opponent nor the applicant claimed that the goods had any special purpose, high-quality or were related to exclusive clothing, footwear or headgear having a higher price. Therefore, the relevant public
in this case will display an average degree of attention.

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).

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.

According to the case-law the word ‘mountain’ is part of basic English vocabulary and
it will be understood by a large part of even the non-English-speaking general public, which has a sufficient knowledge of English (16/03/2017, T‑495/15, MOUNTAIN CITRUS SPAIN (fig.) / monteCitrus (fig.), EU:T:2017:173, § 53).

The coinciding verbal element ‘MOUNTAIN’, meaning ‘a very high area of land with
steep sides’ (information extracted from Collins Dictionary on 11/08/2021 at https://www.collinsdictionary.com/dictionary/english/mountain) might allude to the general idea that the relevant goods, or at least one part of them which may include outdoor clothing and equipment, are designed for use in the mountains. Therefore,
if understood as such, this element is weak.

Considering the above, for the purpose of this comparison, to avoid an unnecessary multiplicity of scenarios, the Opposition Division finds it appropriate to focus
the comparison of the signs on the French-speaking public. Apart from what is stated above, it is also noted that, the French equivalent of the English word ‘mountain’ is ‘montagne’, hence highly similar to the discussed term.

Both marks are figurative marks.

The earlier mark has three abstract figurative elements at the top with the words ‘mountain’ and ‘PRO’ underneath. The word ‘mountain’ is written in standard bold black lower-case letters wherein the letters ‘u’ and ‘n’ are combined together.

The word ‘PRO’ is placed in the bottom right corner and written in standard bold grey upper-case letters, yet in a much smaller font size than the word ‘mountain’. Due to its size, amplification by use of bold type face and central position, the word ‘mountain’ clearly stands out in the earlier sign and constitutes one of its dominant elements.

The relevant public will also understand the word ‘PRO’ with the meaning of ‘for’ or ‘in favour of’, and it may also be understood as relating to ‘professional’ (11/09/2014, T‑127/13, Pro outdoor, EU:T:2014:767, § 56). In this sense, the word ‘PRO’ is descriptive of the quality or purpose of the relevant goods.

The figurative elements of the earlier sign, due to their size and abstract (but not simple) character, are distinctive. As such, they constitute its co-dominant elements and will not be overlooked by the relevant public. Nonetheless, 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). Considering the above, the verbal element ‘mountain’ is the one which the relevant public will retain in their mind as far as both signs are concerned.

The contested sign consists of the verbal elements ‘MOUNTAIN’ (in standard bold upper-case letters) and ‘DISTRICT’ (written in a much smaller size and being separated from the word ‘MOUNTAIN’ by a thin black line). Above the verbal elements there is
a figurative element depicting the image of mountain peaks. All the elements are framed in a circle.

Considering the size and central position of the verbal element ‘MOUNTAIN’
in the contested mark, it constitutes one of its dominant elements, together with the figurative element depicting mountain peaks.

The English word ‘DISTRICT’ means ‘a particular area of a town or country which
has been given official boundaries for the purpose of administration’
(information extracted from Collins Dictionary on 03/08/2021
at https://www.collinsdictionary.com/dictionary/english/district). However, this word does not belong to basic English vocabulary and neither does it have any close equivalent in French (‘région’, ‘quartier’: information extracted from Collins Dictionary on 13/08/2021 at https://www.collinsdictionary.com/dictionary/english-french/district). Therefore, it will not be understood by the relevant public and is considered distinctive as such. Nevertheless, it should be underlined that due to its much smaller size and its position at the bottom of the contested sign, it has a low impact on the overall impression of the sign.

The figurative element in the contested sign representing mountain peaks will only reinforce the meaning of the verbal element ‘MOUNTAIN’. As such, it will be of the same weak distinctive character. The graphic element in the form of a circle in which the other elements of this sign are framed, will be perceived as a standard/decorative element used in logos. Therefore, it is not distinctive.

In word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, TRUBION/TriBion Harmonis (fig.), EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

Visually and aurally, the signs coincide in the word/sound of the coinciding dominant verbal element ‘MOUNTAIN’ which will catch the consumers’ attention first. They differ in the additional verbal elements ‘PRO’ in the earlier mark and ‘DISTRICT’ in the contested sign and the corresponding sound thereof. However, for the reasons explained above (their size and secondary position within the signs), these additional words are not likely to be pronounced due to their reduced impact within the signs (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342; 03/06/2015, T‑544/12, PENSA PHARMA, EU:T:2015:355; 03/06/2015, T‑546/12, Pensa, EU:T:2015:355). Therefore,
it is highly likely that both signs will be referred to aurally by their dominant verbal element ‘MOUNTAIN’.

Visually, the signs also differ in their figurative elements and aspects.

Considering the conclusions regarding the distinctiveness and the impact of the particular components of the signs on the perception thereof, the signs are visually similar to an average degree and aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions on the semantic content conveyed by the verbal elements included in the signs. The signs will be associated with a very similar meaning arising from the coinciding verbal element ‘MOUNTAIN’ and
the figurative element of the contested sign. The differing verbal and figurative elements in both signs are either non-distinctive (‘PRO’ in the earlier mark) or meaningless (‘DISTRICT’ in the contested sign and the figurative elements in the earlier mark). Therefore, since they will not create any clear semantic unit in combination with
the dominant verbal element, they have no impact at the conceptual level.

Therefore, 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 claimed that the earlier trade mark is well known in Spain and highly distinctive but did not submit any evidence to prove this claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. As stated above in section c), the verbal elements of the earlier trade mark have meaning in relation to the relevant goods from the perspective of the part relevant public in the relevant territory. However, the figurative elements of this mark are fanciful and distinctive. Considering the combination of all the elements together,
the distinctiveness of the earlier mark (as a whole) must be seen as normal, despite some of its elements being weak or having a non-distinctive character.

e) Global assessment, other arguments and conclusion

A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree
of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (29/09/1998, Canon, C‑39/97,EU:C:1998:442, § 17).

The goods are identical. They target the public at large with an average degree of attention.

The distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree, aurally similar to an above-average degree and conceptually similar to a high degree on account of their coincidence in the same dominant verbal element, ‘MOUNTAIN’, at the beginning of both signs.
The differences between the signs are confined to elements that, for the reasons explained above, will have less impact on consumers.

In the present case, the relevant consumers will certainly refer to the signs by their dominant verbal component, rather than by describing their stylisation or figurative aspects.

From the case-law it follows that a weak distinctive character of an element of
a composite mark does not necessarily imply that that element cannot constitute
a dominant element since – because, in particular of its position in the sign or its size – it may make an impression on consumers and be remembered by them (15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 50, 55).

Consequently, even if the coinciding verbal element ‘MOUNTAIN’ is considered weak in relation to the relevant goods, the strong similarities between the signs, together with the identity of the goods, are clearly enough to counteract their differences, which,
as explained above, are confined to non-distinctive/secondary elements and aspects.

The applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the word ‘MOUNTAIN’ as one of their elements and which are registered or applied for in relation to goods in Class 25. In support of her argument the applicant refers to nearly 600 trade mark applications and registrations
in the European union trade mark register and presents one page of results from
the TMview database.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that all these marks are valid and protected for goods in Class 25.
There has been also no evidence submitted to prove that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘MOUNTAIN’. Under these circumstances, the applicant’s claim must be set aside.

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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29).

It is a common practice for clothing manufacturers to make variants of their marks,
for example by altering the typeface or colours or adding verbal or figurative elements,
to denote new product lines or to endow their trade mark with a fresh, modernised image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logos. Consequently, the relevant public may attribute the same (or economically linked) commercial origin to all the goods in question.

Given the identity between the goods and given that the earlier mark’s dominant verbal element ‘MOUNTAIN’ is reproduced in the contested mark and also constitutes
one of its dominant elements, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand 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).

Considering all the above, there is a likelihood of confusion on the part of the French-speaking 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 European Union trade mark registration No 13 102 868. It follows that the contested trade mark must be rejected for all the contested goods.

As the above earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the contested goods, 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, § 45). For the sake of completeness, the Opposition Division notes that proof of use was requested for the remaining two earlier rights, EUTM No 4 781 084 and EUTM No 4 781 134, invoked as basis for the opposition. This claim was found admissible. The opponent did not submit any evidence concerning the use of the two trade marks.

Moreover, the opponent did not argue that there were proper reasons for non-use. Therefore, the opposition would not be examined as regards the above-referenced earlier trade marks as stated in the communication to the parties of 05/02/2021.

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

Renata COTTRELL

Anna PASIUT

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.