OPPOSITION No B 3 118 394

TJ Footwear (UK) Ltd, Palmerstone House, 814 Brighton Road, CR8 2BR Purley, United Kingdom (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

GT Collection, Gašper Tratnik, S.P., Lačja Vas 19a, 3331 Nazarje, SH, Slovenia (applicant), represented by Peter Merc, Breg 14, 1000 Ljubljana, SH, Slovenia (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 118 394 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 04/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 177 616 ‘GT Collection’ (word mark). The opposition is based on European Union trade mark registration No 17 185 745 ‘TJ COLLECTION’ (word mark) and United Kingdom trade mark registration No 3 272 430 ‘TJ COLLECTION’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

EARLIER UK RIGHT

On 01/02/2020, the United Kingdom (UK) withdrew from the European Union (EU) subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registration No 3 272 430 no longer constitutes a valid basis of the opposition.

The opposition must, therefore, be rejected as far as it is based on this earlier right. The examination of the opposition will continue as regards European Union trade mark registration No 17 185 745.

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

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions; retailing, wholesaling and sale via global computer networks of spectacles, sunglasses, spectacle cases and covers, spectacle frames, clothing, footwear, headgear, soaps, perfumes, essential oils, cosmetics and hair lotions, articles of leather and imitations of leather, namely handbags, bags, backpacks; retailing, wholesaling and sale via global computer networks of wallets, travelling bags, gloves and belts, trunks and travelling bags, umbrellas and parasols, walking sticks, jewellery, precious stones, horological and chronometric instruments, clothing patterns; retailing, wholesaling and sale via global computer networks of bookbinding material, photographs, stationery, namely pads of paper, drawing pads, blotters, notebooks for writing, calendars, notebooks, envelopes (stationery), writing paper, indexes, adhesives for stationery or household purposes, packaging materials of plastic, printers’ type, printing blocks; retailing, wholesaling and sale via global computer networks of goods made of paper or cardboard, namely bags or paper for packaging, bags or boxes made of paper or cardboard, hat boxes of cardboard; retailing, wholesaling and sale via global computer networks of printed matter, in particular posters, albums, leaflets, geographical maps, postcards, catalogues, labels, not of textile, printed matter, books, periodicals, periodical publications, printed publications, magazines (periodical publications), diaries, tapes.

The contested goods and services are the following:

Class 14: Fashion jewellery; wristwatches; precious stones; jewellery stones; imitation precious stones; synthetic stones [jewellery]; jewellery made of precious stones; jewellery fashioned of semi-precious stones.

Class 25: Clothes; belts [clothing]; capes; capes (clothing); wristbands.

Class 42: Fashion design; design of fashion accessories; fashion design consulting services.

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 14

The opponent’s list of services in Class 35 includes the sale via global computer networks of jewellery, precious stones, horological and chronometric instruments.

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 fashion jewellery; precious stones; jewellery stones; jewellery made of precious stones; jewellery fashioned of semi-precious stones are similar to an average degree to the opponent’s sale via global computer networks of jewellery, precious stones.

Likewise, the contested wristwatches are similar to an average degree to the opponent’s sale via global computer networks of horological and chronometric instruments.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or 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.

Imitation precious stones and synthetic stones [jewellery] are highly similar to precious stones. They have the same purpose and method of use, are in competition, are usually produced by the same undertakings and sold in the same shops (jewellery products) and target the same consumers. Therefore, they are similar to a low degree to the opponent’s sale via global computer networks of jewellery, precious stones.

Contested goods in Class 25

The contested clothes are identically contained in both list of goods (including synonyms).

The contested belts [clothing]; capes; capes (clothing); wristbands are included in the opponent’s broad category of clothing. Therefore, they are identical.

Contested services in Class 42

The contested fashion design; design of fashion accessories; fashion design consulting services are similar to a low degree to the opponent’s clothing in Class 25 since they coincide in their relevant public and may be manufactured and/or provided by the same undertakings. Producers of ready-made clothing (especially suits and wedding dresses) and some fashion accessories frequently provide fashion design services which is an earlier step in the clothing production process.

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 varying degrees are directed at the public at large and professionals in the fashion field.

The public’s degree of attention may vary from average to high, depending on, among other things, the price or specialised nature of the goods or services purchased. For example, while the degree of attention for clothes is average, a higher degree of attention is paid when purchasing jewellery because the public generally puts a certain amount of thought into the selection of these goods and they are often purchased as luxury items or as gifts.

c) The signs

TJ COLLECTION	GT Collection
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 coinciding verbal element ‘COLLECTION’ means, in English, ‘a range of new clothes produced by a fashion house’ (information extracted from Lexico Dictionary on 27/07/2021 at https://www.lexico.com/definition/collection). It will be perceived as a non-distinctive element by the relevant public as it is customary in the fashion/jewellery industry to divide goods according to their design or seasonal classification into ‘collections’, that is to say ‘kolektsiya’ (колекция) (Bulgarian), ‘kolekce’ (Czech), ‘collection’ (French), ‘collezione’ (Italian), ‘kolekcija’ (Latvian and Lithuanian), ‘kolekcja’ (Polish), ‘colecção’ (Portuguese), ‘colectare’ (Romanian), ‘kolekcia’ (Slovak) and ‘colección’ (Spanish).

The contested sign’s first verbal element ‘GT’ will be associated by part of the public, such as the English-speaking public as ‘denoting a high-performance car’ (information extracted from Lexico Dictionary on 27/07/2021 at https://www.lexico.com/definition/gt). However, the Opposition Division considers it appropriate to first examine the opposition in relation to the part of the public for who the initial verbal elements of the signs (‘TJ’/‘GT’) are perceived as fanciful words, which have no meaning and are, therefore, distinctive. This is the most advantageous scenario for the opponent because if neither of the verbal elements conveys any concept for the relevant public, they are less likely to distinguish between the signs or to notice their differences in spelling.

Visually and aurally, the signs coincide in the non-distinctive verbal element ‘COLLECTION’ (and its pronunciation), placed at the end of both signs.

The initial and distinctive verbal elements of the signs (‘TJ’/‘GT’) are only two letters and visually coincide only in the letter ‘T’, albeit placed in a reversed position.

Aurally, contrary to the opponent’s view, the pronunciation of the first letters of the signs will not be equivalent because the majority of the public will pronounce them as two separate letters (‘T’/‘J’ and ‘G’/‘T’). For a part of the public (e.g. the English-speaking part), the letters ‘J’ and ‘G’ are quite close. For another part of the public (e.g. the Spanish-speaking part of the public) the similarities between ‘j-jota’ and ‘g-ge’ are faint.

The differences are relevant taking into account that 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.

Therefore, the signs are visually similar to a low degree and aurally similar to at most an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding word ‘COLLECTION’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 and services 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 a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar to varying degrees. They target the public at large and professionals, whose degree of attention may vary from average to high. The earlier mark enjoys a normal degree of distinctiveness.

Contrary to the opponent’s view, the differences between the signs, namely the different beginnings, will be readily noticed by average consumers and are sufficient to produce a different overall impression to allow consumers to distinguish them.

The coinciding verbal element ‘collection’ is non-distinctive for the relevant goods and services and is placed at the end of the signs. The remaining verbal elements (‘TJ’/‘GT’), which are distinctive and placed at the beginning of the signs, are composed of two letters, and coincide in only one (‘T’). This coinciding letter is placed in a different position within the signs. Being the only distinctive parts of the signs short words, small differences frequently lead to a different overall impression.

It is true that, as indicated by the opponent, regarding clothing products 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). However, in this case the visual similarity between the signs is low. The low degree of visual similarity is not sufficient for the public to confuse or associate the signs. The differences between the signs will be clearly perceived and recollected. In addition, the conceptual aspect does not influence the assessment of the similarity of the signs. As the two initial letters do not have a semantic content for the relevant public, they will not associate the signs with a close concept or to a related commercial origin.

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 Opposition Division has taken this principle into account when assessing the likelihood of confusion, and the identity of some of the goods is compensated by the existing differences between the signs. Indeed, even the average consumer displaying an average degree of attention is reasonably well informed, attentive and circumspect and therefore would perceive the differences between the signs.

As mentioned above, this is the best-case scenario for the opponent, since for the part of the public who may perceive either or both signs as conveying a concept, irrespective of its degree of distinctiveness, the signs would be perceived as conceptually not similar and thus even more easily distinguished by those consumers.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Fernando AZCONA DELGADO

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.