OPPOSITION No B 3 119 676

CBM Creative Brands Marken GmbH, Kalandergasse 4, 8045 Zürich, Switzerland (opponent), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Anchors Aweigh di Andre’ Suergiu, Via la Nurra, 20, 09121 Cagliari, Italy (applicant), represented by Massimo Simbula, Viale la Plaia, 15, 09123 Cagliari, Italy (professional representative).

On 05/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 119 676 is upheld for all the contested goods.

2. European Union trade mark application No 18 185 815 is rejected in its entirety.

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

REASONS

On 13/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 185 815 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 11 306 545 ‘HOLY’ (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.

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 European Union trade mark registration No 11 306 545.

a) The goods

Following a decision of the Cancellation Division (10/06/2020, 35 781 C), the goods on which the opposition is based are the following:

Class 25: Clothing, headgear.

The contested goods are the following:

Class 25: Footwear; casualwear; clothing for skiing; surfwear; sportswear; tank tops; sweat shirts; sweat jackets; polar fleece jackets; long jackets; sports jackets; overcoats; trousers.

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.

The contested casualwear; clothing for skiing; surfwear; sportswear; tank tops; sweat shirts; sweat jackets; polar fleece jackets; long jackets; sports jackets; overcoats; trousers are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear is similar to the opponent’s clothing because they have the same purpose, producers, distribution channels and relevant public.

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 or similar are directed at the public at large.

The degree of attention is average.

c) The signs

HOLY
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 verbal elements in both signs are meaningful for the English-speaking part of the relevant public. Since this has an impact on the conceptual similarity of the signs and increases the likelihood of confusion, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The coinciding verbal element ‘Holy’ will be understood as ‘dedicated or consecrated to God or a religious purpose; sacred’ (information extracted from Lexico on 05/07/2021 at https://www.lexico.com/definition/holy). As it has no relation to the goods in question, its degree of distinctiveness is average.

The verbal element ‘BLUE’ of the contested sign will be understood as ‘of a colour intermediate between green and violet, as of the sky or sea on a sunny day’ (information extracted from Lexico on 05/07/2021 at https://www.lexico.com/definition/blue). Since the goods in question are fashion articles which can be blue in colour, the relevant public will not pay as much attention to this element as to the other more distinctive element of the mark, namely the verbal element ‘HOLY’. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks (16/11/2016, R 1967/2012‑5, HOLLY BLUE / HOLY § 55).

The figurative elements in the contested sign, namely the red element surrounding the verbal elements ‘HOLY’ and ‘BLUE’ that is likely to be perceived as a stylised depiction of a wreath of thorns, and the rectangular blue background have less impact than the distinctive verbal element ‘HOLY’. 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).

Consumers generally tend to focus on the beginning or top of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘HOLY’. However, they differ in the sequence of letters ‘BLUE’ and the figurative elements of the contested sign which have no counterparts in the earlier sign.

Given that the coinciding verbal element has the greatest impact in the contested sign, and it is placed above the verbal element ‘BLUE’ where it will first catch the consumer’s attention, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛HO-LY’, present identically in both signs. The pronunciation differs in the syllable ‘BLUE’ of the contested mark, which has no counterpart in the earlier sign.

The figurative elements of the contested sign are not subject to a phonetic assessment as they will not be pronounced.

Given the greater impact of the coinciding verbal element ‘HOLY’, the signs are aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the meaning of the word ‘HOLY’, and the contested sign will also be associated with the meaning of the word ‘BLUE’ and the depiction of a wreath of thorns. Since the latter two elements have less impact than the coinciding verbal element ‘HOLY’, the signs 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.

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. 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).

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.

The goods are partly identical and partly similar. The signs are visually and conceptually similar to an average degree and aurally similar to an above-average degree. The distinctiveness of the earlier sign is normal and the degree of attention of the relevant public is average.

The earlier sign is fully included in the contested sign where it is also the element with the strongest impact. The other elements of the contested sign have less impact for the reasons mentioned above in part c). When the earlier mark is fully included in the contested sign, in general terms, this constitutes an indication that the two trade marks are similar (04/05/2005, T‑22/04, Westlife, EU:T:2005:160, § 40).

In addition, the verbal element ‘HOLY’ in the contested sign is depicted above the verbal element ‘BLUE’ where it will attract the consumer’s attention more.

On account of the coinciding verbal element ‘HOLY’ that is also the element with the strongest impact in the contested sign, 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, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 306 545. It follows that the contested trade mark must be rejected for all the contested goods.

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 as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the above mentioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Jakub MROZOWSKI

Ivo TSENKOV

Justyna GBYL

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.