OPPOSITION Nо B 3 114 113

Black Clover Enterprises, LlC, 12101 S. State St., # 106, 84020 Draper, Utah, United States of America (opponent), represented by Gastão da Cunha Ferreira, Lda., Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative)

a g a i n s t

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

On 02/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 114 113 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, toys.

2. European Union trade mark application No 18 163 901 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

On 16/03/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 163 901 ‘CLOVER’ (word mark), namely against all the goods in Class 25 and some of the services in Class 35. The opposition is based on EUTM registration No 14 020 309 (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 and services

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

Class 18: Goods of leather and imitations of leather, similar goods not included in other classes; trunks and travelling bags; umbrellas; walking sticks; pack sacks; casual bags; boxes for storing and transporting hats and caps.

Class 25: Clothing, headgear, footwear; caps [headwear]; trousers; shirts; shorts; bodices [lingerie]; jackets [clothing]; waist belts and tee-shirts.

Class 28: Games and playthings; gymnastic and sporting articles non included in other classes; golf putters; golf club covers; golf head covers; golf club bags; golf balls; golf gloves; poker chips.

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, jewellery, cosmetics, toys.

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

The term ‘namely’ used in the applicant’s list of goods 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 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 25

The contested clothing, namely, shirts, pants, coats, suits, dresses; swimwear; sportswear leisurewear, namely, leisure suits are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

The contested headwear, namely, hats, headbands and caps are included in the broad category of the opponent’s headgear. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail store services in relation to clothing are similar to the opponent’s clothing in Class 25 and the contested retail store services in relation to toys are similar to the opponent’s games and playthings in Class 28.

However, the contested retail store services in relation to jewellery, cosmetics are dissimilar to any of the opponent’s goods in Classes 18 (goods of leather and imitations of leather, different kinds of carrying bags, umbrellas; walking sticks), 25 (clothing, footwear, headwear) and 28 (games and playthings, gymnastic and sporting articles). 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.

Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. These conditions are not fulfilled in the present case since the goods sold at retail are dissimilar to the other 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 or similar are directed at the public at large.

The degree of attention is considered average.

c) The signs

	CLOVER
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.

Bearing in mind that the signs are English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, since for them the signs will bear similarities (e.g. conceptual) that might not arise from the perspective of other consumers. Furthermore, this part of the public will clearly perceive the figurative element of the earlier mark as an ‘O’ and as a mere depiction of the verbal element ‘CLOVER’. Therefore, this is considered the scenario where the likelihood of confusion is more likely to occur.

The common element ‘CLOVER’ will be understood as a small plant with pink or white ball-shaped flowers. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The additional verbal element ‘BLACK’ of the earlier mark refers to the darkest colour that there is. This verbal element will be of secondary importance as it is an adjective that defines the distinctive element ‘CLOVER’. Moreover, the verbal element ‘BLACK’ may be perceived as a characteristic or a typical feature of the relevant goods (e.g. the colour of the goods or their packaging). Therefore, it has a limited degree of distinctiveness, a lower impact on consumers and, consequently, less trade mark significance.

The figurative element of the earlier mark, in line with the assertions above, is distinctive for the relevant goods but is of reduced impact in the overall impression of the sign, because 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 stylisation of the verbal elements, together with the black rectangle, are purely decorative. Therefore, their impact, if any, is reduced.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the word/sound ‘CLOVER’. They differ in the additional word/sound ‘BLACK’ of the earlier mark.

Visually, the signs further differ in the figurative elements and aspects of the earlier mark.

Therefore, and taking into account the conclusions regarding the distinctiveness and the impact of the elements, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with very similar meanings arising from the coinciding distinctive concept conveyed by the verbal element ‘CLOVER’, regardless of the existence of the verbal element ‘BLACK’, the signs are considered conceptually highly similar.

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, despite the presence of an element of lower distinctiveness in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are identical and the contested services are partly similar and partly dissimilar to the opponent’s goods. They target the public at large with an average degree of attention.

The signs are visually, aurally and conceptually similar to a high degree on account of their common element ‘CLOVER’, which constitutes the entirety of the contested sign and the most impactful element of the earlier mark. The differences between the signs are confined to elements that will have less impact on consumers. The earlier mark has a normal degree of distinctiveness.

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. It is highly conceivable 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 and services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Indeed, the relevant consumer is highly likely to perceive the contested sign as a variation of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 020 309. 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.

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.

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

The Opposition Division

Carlos MATEO PÉREZ

Sofía SACRISTÁN MARTÍNEZ

Loreto URRACA LUQUE

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.