OPPOSITION Nо B 3 122 659

 

Chapter 4 Corp. D.B.A. Supreme, 62 King Street, 10014 New York, United States of America (opponent), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Lucía García, C/ Francisco Navacerrada, 28028 Madrid, Spain and Daher Jalil-Abumalham, C/Pintor Alejandro Mieres Bustillo, 33204 Gijón, Spain (applicant).

On 12/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 122 659 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 172 914 is rejected in its entirety.

 

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

 

REASONS

 

On 28/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 172 914 (figurative mark). The opposition is based on, inter alia, EUTM registration No 16 815 763, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR, Article 8(4) EUTMR and Article 8(5) 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 EUTM registration No 16 815 763.

 

a) The goods and services

 

The goods and services on which the opposition is based are, inter alia, the following:

Class 25: Clothing, in particular shirts; Tee-shirts; long-sleeved shirts; polo shirts; long sleeved polo shirts; rugby tops; jerseys; sleeveless jerseys; baseball shirts; hooded baseball jerseys; dress shirts; denim jeans; jean shirts; denim aprons; hooded sweatshirts; buttoned sweatshirts; hooded zip-ups; crew-neck sweatshirts; thermal wear; parkas; sweaters; cardigans; trousers; cargo pants; trousers shorts; boxer shorts; tops [clothing]; tank tops; sweat shirts; sweat jackets; fleece shorts; tracksuit bottoms; waistcoats; fleece vests; sweaters; half-zip pullovers; jackets [clothing]; coats; blazers; men's wearing apparel; reversible jackets; wind resistant jackets; cagoules; sports jackets; golf and ski jackets; heavy coats; topcoats; trench coats; jackets of shearling wool; heavy jackets; car coats; ski jackets; snowboard jackets; rainproof jackets; suede jackets; long jackets; bushjackets; warm-up jackets; light-reflecting jackets; camouflage jackets; bed jackets; down jackets; fishermen's jackets; denim jackets; leather jackets; fur jackets; lumberjackets; riding jackets; sheepskin coats; motorcycle jackets; knit jackets; sleeveless jackets; safari jackets; quilted jackets; hunting jackets; sleeved jackets; parkas; men's waistcoats; swimming costumes; beachwear; visors; hair wraps; mouth masks; costumes; ear muffs [clothing]; thermal underwear; tights; underwear; berets; hats; knitted caps; military caps; baseball caps; cloche hats; headgear; sashes for wear; bandanas [neckerchiefs]; waist belts; neck gaiters; neckties; gloves [clothing]; boots; mackintoshes; shoes; gymnastic shoes; shawls; pyjamas; nightwear; women’s clothes; skirts; chemisettes; women's waistcoats; robes; children's polo shirts; rugby shirts for children; ski suits for children; cargo pants for children; leotards for children.

The contested goods and services are the following:

 

Class 25: Printed t-shirts; vest tops; Tee-shirts; crop tops; tank tops; Tee-shirts.

Class 40: T-shirt printing; T-shirt embroidering services.

Class 42: Design of logos for T-shirts.

As a preliminary remark, an interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘in particular’, used in the opponent’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).

 

Furthermore, 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 printed t-shirts; vest tops; Tee-shirts (listed twice); crop tops; tank tops; Tee-shirts are either identically included in the opponent’s list of goods in the same class or they are included in the broader category of the opponent’s clothing. Therefore, they are identical.

Contested services in Classes 40 and 42

The contested design of logos for T-shirts in Class 42 are similar to a low degree to the opponent’s clothing in Class 25 since they share the same relevant public and might coincide in the same usual origin (producer/provider). Producers of ready-made clothing and some fashion accessories frequently provide tailoring services, which are closely related to fashion design, which is the preceding step in the process of clothing production process.

The same holds true for the contested T-shirt printing; T-shirt embroidering services in Class 40: they may have the same relevant public and be manufactured and/or provided by the same undertakings. It is not uncommon in the market that producers of clothing also provide such fashion design services. Therefore, these services are similar to a low degree to the opponent’s goods in Class 25.

 

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 a low degree are directed at the public at large and also at professional customers.

The degree of attention may vary from average to high depending on the frequency of purchase and the price. 

 

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.

The earlier mark’s verbal element is meaningful in English, meaning, as an adjective, ‘highest in authority, importance, or quality’ (extracted from Oxford English Dictionary at http://www.oed.com). In Italian this element is the feminine plural of the adjective ‘supremo’ with an analogous meaning. It will also be understood in several other European languages because this word is identical or very close to the equivalent word in the official language of at least some European Union countries (such as Danish, English, French, Spanish, German, Portuguese, Romanian, Slovenian, Swedish).

Taking into account the laudatory character of this element, for that part of the public its degree of distinctiveness is limited.

The contested sign’s verbal element does not exist as such but, on account of its high similarity to the term ‘supreme’, it is likely to evoke the same meaning as the earlier mark’s verbal element for at least part of the public that grasps the meaning of ‘supreme’. It could, for instance, easily be seen as the equivalent term in a foreign language.

For another non-negligible part of the public, such as, inter alia, a sizable (i.e. non negligible) part of the German and of the Polish-speaking public, however, both verbal elements are meaningless and fanciful, being therefore of average distinctiveness. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on that part of the public, for which the signs will not evoke the same concept and will be inherently distinctive.

The simple rectangular background / border in red in both signs under comparison have a limited distinctive character as they will be perceived as being of a purely decorative nature and/or as label-like shapes. The same goes for the slight stylisation of the letters (in the earlier mark, in white, bold italic font; in the contested sign, the white bold typeface) that will, in any event, not detract consumers‘ attention away from the verbal elements as such.

It follows from the above that the verbal elements of both signs are their most distinctive elements. 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). In the present case, the relevant public will certainly refer to the signs by their verbal and distinctive element, ‘SUPREME’/’SUPRIMA’, rather than by describing their figurative aspects, that are furthermore of weak distinctiveness.

 

Furthermore, 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.

It follows from the above that, conceptually, neither of the signs has a meaning for the public under analysis. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

Visually and aurally, the signs coincide in the sequence of the (sound of the) letters ‘S-U-P-R-*-M-*’. Although they differ in their middle letter (‘I’/’E’) and in their end letter ‘A’/’E’ at the end of the contested sign, as well as in their minimal stylisation (which, in addition, is of weak distinctiveness, and has no impact aurally), it is important to note that these few differentiating elements will have a much lesser visual and aural impact than the shared letter sequence. Also, as regards the stylisation, although not exactly the same, it is fairly similar in both signs: both combine a similar standard, capital font, and coincide in the use of red and white colours and a rectangular background. This, overall, and despite the limited distinctive character of these figurative aspects, brings the signs even more closer visually. The signs furthermore share the same vowel structure and have identical beginnings – which will first catch the attention of the reader.

Therefore, the signs are visually and aurally similar to a high degree overall.

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.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as normal from the perspective of the public taken under analysis in the relevant territory.

 

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

As concluded above, the contested goods and services are identical or similar to a low degree to the opponent’s goods. The signs show striking similarities from a visual and aural perspective. The distinctiveness of the earlier mark is considered to be average. The degree of attention will vary from average to high.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual similarities between the signs are particularly relevant when assessing the likelihood of confusion between them.

 

Account must also be 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Admittedly, there are a few differences between the signs. However, their impact is not such as to enable a part of the public, whether the public at large or professionals, to safely distinguish between them in the context of identical or similar (albeit to a low degree) goods and services, including where their degree of attention is enhanced when making the purchase.

It follows that the striking visual and aural similarities between the marks are sufficient for it to be concluded that a substantial part of the relevant public taken into account could reasonably believe that the goods and services found to be identical or similar to a low degree originated from the same undertaking or economically linked undertakings.

Considering all the above, taking into account the principle of interdependence, the Opposition Division concludes that the few differences are clearly insufficient to counteract the similarities and that a likelihood of confusion or association cannot be excluded for the relevant public under analysis. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore the opposition is well founded on the basis of the opponent’s earlier mark. It follows that the contested sign must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

As the earlier mark compared above leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, 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). Furthermore, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need either to further examine the other grounds of the opposition, namely Article 8(1)(a), Article 8(4) and (5) EUTMR.

 

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

 

 

Félix ORTUÑO LÓPEZ

Edith Elisabeth VAN DEN EEDE

Gonzalo BILBAO TEJADA

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.