OPPOSITION Nо B 3 116 656

Caritas Española, C/ Embajadores, 162, 28045 Madrid, Spain (opponent), represented by Juan Botella Reyna, Avda. de Moratalaz, 40, 1ª pl., 28030 Madrid, Spain (professional representative) 

 

a g a i n s t

 

F B Line Srl, Via F. Ferrucci N. 57, 59100 Prato, Italy (applicant), represented by Matteo Scaglietti, Via Giuseppe Castelli, 6, 41124 Modena, Italy (professional representative).

On 11/12/2020, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 116 656 is partially upheld, namely for the following contested goods: Class 25: Footwear; clothing; headgear.

 

2.	European Union trade mark application No 18 176 316 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 18 176 316 (figurative mark). The opposition is based on, inter alia, Spanish trade mark registration No 3 634 280, (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 Spanish trade mark registration No 3 634 280.

a) The goods and services

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

Class 25: Clothing, footwear, headgear.

Class 35: Retailing, wholesaling, and sale via global computer networks of clothing, footwear, headgear, accessories, furniture, toys.

The contested goods are the following:

Class 23: Yarns and threads.

Class 25: Footwear; clothing; headgear; parts of clothing, footwear and headgear.

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 23

The contested yarns and threads are dissimilar to the opponent’s goods in Class 25. The only point of contact between the goods is that yarns and threads are used in the manufacture of clothing. However this is not enough to justify a finding of similarity. They serve completely different purposes: clothing, footwear, headgear are meant to be worn by people, for protection and/or fashion, whereas yarns and threads are mainly for use in the production of textiles, sewing, crocheting, knitting, weaving, embroidery, or ropemaking. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, they are dissimilar.

They are also dissimilar to the opponent’s services in Class 35 covering retailing, wholesaling, and sale via global computer networks of clothing, footwear, headgear, accessories, furniture, toys. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Services around sale consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, 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 specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are offered in the same places, belong to the same market sector and are of interest to the same consumer. These conditions are not fulfilled in the present case since the goods sold are dissimilar to the goods themselves.

Contested goods in Class 25

Footwear; clothing; headgear are identically protected by both marks.

However, the contested parts of clothing, footwear and headgear are dissimilar to the opponent’s clothing, footwear and headgear and the services in Class 35. The opponent’s goods are finished products and the services concern the sale of finished goods while the contested goods are merely parts of these goods. The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61); rather, such similarity is an exception. This exception would be based on the fact that the parts and fittings were often produced and/or sold by the same undertaking that manufactured the end product and targeted the same purchasing public, as in the case of spare or replacement parts.

This is not the case here. The contested goods target footwear, headgear and clothing manufacturers whereas the opponent’s goods and services target the public at large. The goods are not distributed through the same channels, not even through the opponent’s sales services. Consumers would not expect the contested parts of clothing, footwear and headgear to be produced by the companies responsible for marketing the finished products or selling them. Therefore, these goods and services are dissimilar.

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 are directed at the public at large. The degree of attention will be average.

c) The signs

 

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both signs contain the stylised letter combination ‘RE’, which will be associated by the relevant public with the second note of the sol-fa musical scale or with a prefix indicating repetition of an action. It has no meaning in relation to the relevant goods and, therefore, it is distinctive. In the earlier mark, this verbal element is followed by a hyphen and depicted inside a black circle, which is a basic geometric form playing a merely decorative role in the mark and which is, therefore, non-distinctive.

In the contested sign, the element ‘RE’ is followed by a dot and the word ‘FABRICS’ which is likely to be associated by the relevant public with the Spanish word ‘FABRICA’, meaning factory. This element is of very limited distinctiveness to the extent it refers to the place where the goods are manufactured. Below these elements, the words ‘MADE IN ITALY’ in standard typeface, will be perceived as such by the public since they are commonly used in the relevant territory. They constitute a non-distinctive element which merely indicates the geographical origin of the goods. Therefore, the most distinctive element in the mark is ‘RE’.

This element is also placed at the beginning of the mark where consumers generally tend to focus. 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.

‘RE’ and ‘FABRICS’ are co-dominant elements (visually outstanding) in the contested mark due to their size in comparison with the words ‘MADE IN ITALY’ which occupy a secondary position within the sign.

With regard to the different stylisation of the verbal elements, when signs consist of both verbal and figurative components (or have stylised typefaces as in the present case), 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).

Visually, the signs coincide in the element ‘RE’ (albeit depicted in a different typeface) which is the only verbal element of the earlier mark and the most distinctive one in the contested sign and also placed at its beginning, where consumers pay more attention. The marks differ in their stylisations and in the figurative element of the earlier mark, all having less impact on the public, and also in the additional elements of the contested sign which are less distinctive.

 

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RE’, present identically in both signs. The pronunciation differs in the syllables ‘FA-BRICS’ of the contested sign, which have no counterparts in the earlier sign. The remaining elements ‘MADE IN ITALY’ will not be pronounced due to their smaller size and the absence of distinctive character. Indeed, it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the musical note or the prefix indicating repetition of an action, they are conceptually similar to an average 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 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

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).

The contested goods are partly identical and partly dissimilar to the goods and services covered by the earlier mark. The signs show visual, aural and conceptual similarities to the levels indicated above. They result from the presence of the element ‘RE’ which is the only word of the earlier mark and occupies a predominant role in the contested sign, where it plays an independent and distinctive role. The differences between the marks lie in elements which are less distinctive and/or play a secondary role.

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. In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. 

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

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 its opposition on the Spanish trade mark registration No 3 634 263,  .

 

Since this mark covers the same scope of goods and services, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

 

 

Martin MITURA

Begoña URIARTE VALIENTE

Martina GALLE

 

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.