OPPOSITION Nо B 3 114 547

 

Zarco - Fábrica de Calçado, Lda., Rua Oliveira Figueiredo, 182-202-Lote 7, 3700-202 S. João da Madeira, Portugal (opponent), represented by A.G. da Cunha Ferreira, Lda., Avenida 5 de Outubro, 146-7º, 1050-061 Lisboa, Portugal (professional representative) 

 

a g a i n s t

 

N-Cubator B.V., Markt 19, 6071 JD Swalmen, the Netherlands (applicant),

On 08/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 114 547 is partially upheld, namely for the following contested goods and services:

 

Class 25: Clothing, namely, shirts, pants, coats, suits, dresses; casual, children's, evening, exercise, rain, sports and beach footwear; athletic footwear; beach footwear; casual footwear; climbing footwear; exercise footwear; infant footwear; headwear, namely, hats, headbands and caps; swimwear; sportswear; leisurewear, namely, leisure suits and shoes. Class 35: Retail store services in relation to clothing.

2.

European Union trade mark application No 18 163 407 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 163 407 ‘ZAPP’ (word mark), namely against all the goods in Class 25 and some of the services in Classes 35 and 41. The opposition is based on Portuguese trade mark registration No 229 220, ‘ZAP’ (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 and services

 

The goods on which the opposition is based are the following:

 

Class 25: Footwear; soles for footwear.

The contested goods and services are the following:

 

Class 25: Clothing, namely, shirts, pants, coats, suits, dresses; casual, children's, evening, exercise, rain, sports and beach footwear; athletic footwear; beach footwear; casual footwear; climbing footwear; exercise footwear; infant footwear; headwear, namely, hats, headbands and caps; swimwear; sportswear; leisurewear, namely, leisure suits and shoes.

Class 35: Retail store services in relation to clothing, books, computer equipment, computer software, furniture, grocery, jewellery, food, cosmetics, toys, automobile parts and audio equipment.

Class 41: Education and training services, namely, providing classes, seminars, workshops in the fields of fashion; entertainment services, namely, organizing, arranging, and hosting fashion shows; arranging and conducting seminars in the field of fashion.

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

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

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.

 

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.

Contested goods in Class 25

The contested casual, children's, evening, exercise, rain, sports and beach footwear; athletic footwear; beach footwear; casual footwear; climbing footwear; exercise footwear; infant footwear are included in the opponent's broad category of footwear. Therefore, they are identical.

Footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the contested clothing, namely, shirts, pants, coats, suits, dresses; headwear, namely, hats, headbands and caps; swimwear; sportswear; leisurewear, namely, leisure suits and shoes are similar to the opponent's footwear because they have the same purpose, they coincide in distribution channels, they coincide in end user and in producer.

Contested services in Class 35

There is a low degree of similarity between the retail services concerning specific goods and other goods which are similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers. Therefore, the contested retail store services in relation to clothing are similar to a low degree to the opponent's footwear.

Retail store services of books, computer equipment, computer software, furniture, grocery, jewellery, food, cosmetics, toys, automobile parts and audio equipment, however, have no points in common with the opponent´s goods in Class 25 (footwear and soles for footwear). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Therefore, the contested retail store services in relation to books, computer equipment, computer software, furniture, grocery, jewellery, food, cosmetics, toys, automobile parts and audio equipment are dissimilar to the opponent’s goods.

Contested services in Class 41

The contested education and training services, namely, providing classes, seminars, workshops in the fields of fashion; entertainment services, namely, organizing, arranging, and hosting fashion shows; arranging and conducting seminars in the field of fashion have different nature, purpose and methods of use compared to all the goods of the opponent in Class 25. Furthermore, they have different manufacturers/providers, distribution channels and users. The fact that the applicant´s services are rendered in relation to the field of fashion is not sufficient to establish any degree of similarity with footwear or parts thereof. These services are therefore dissimilar to all the opponent´s goods.

 

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 and services found to be identical and similar to various degrees are directed at the public at large whose level of attention during the purchase of goods and services is average.

 

c) The signs

 

ZAP	ZAPP
Earlier trade mark	Contested sign

 

The relevant territory is Portugal.

 

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 mark is composed of the three letter word ‘ZAP’ that is meaningless in the relevant territory. Therefore, this element is distinctive.

 

The contested mark is composed of the four letter word ‘ZAPP’ that is also meaningless in the relevant territory. Therefore, this element is distinctive.

Visually and aurally, the signs coincide in the three letters ‘ZAP’ which are the sole element of the earlier mark, and are found identically at the beginning of the contested sign. The latter only differs in the additional letter ‘P’, but this has no effect on the pronunciation of the sign.

Therefore, the signs are visually highly similar and aurally identical.

Conceptually, neither of the signs has a meaning for 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.

 

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

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 and services covered are from the same or economically linked undertakings.

In the present case, the goods and services are partly identical, partly similar to varying degrees and partly dissimilar and target the average consumer, whose degree of attention during the purchase of the goods and services concerned is average. The distinctive character of the earlier trade mark is considered to be normal. The signs are visually similar to a high degree and aurally identical, while a conceptual comparison cannot be made.

 

The signs only differ in one additional letter ‘P’ in the contested sign, which does not alter the identical sound of the signs ‘ZAP’ versus ‘ZAPP’. Consequently, the fact that the signs coincide in three letters and that the only differing one is phonetically identical, leads to a finding of likelihood of confusion.

Account is taken of the fact 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion in the relevant territory, and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration.

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark, including those found to be only similar to a low degree.

 

The rest of the contested services 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 services cannot be successful.

 

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Marzena MACIAK

Helen Louise MOSBACK

Saida CRABBE

 

 

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.