OPPOSITION Nо B 3 125 308

 

Eduard Meier GmbH, Brienner Str. 10, 80333 München, Germany (opponent), represented by SKW Schwarz Rechtsanwälte, Wittelsbacherplatz 1, 80333 München, Germany (professional representative) 

 

a g a i n s t

 

Innelec Multimedia, Société anonyme, Centre d'activités de l'Ourcq 45, rue Delizy, 93500 Pantin, France (applicant), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative).

On 26/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 125 308 is upheld for all the contested goods, namely all the goods in Class 25.

2.	European Union trade mark application No 18 211 814 is rejected for all the above goods. It may proceed for the remaining non-contested goods.

 

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

REASONS

 

On 30/06/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 211 814 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 172 536 for the word mark ‘EM’. 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 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, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

 

a)  The goods

 

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

 

Class 25: Footwear of all types; clothing, in particular shirts, scarves, including neckties, socks, headgear, in particular hats and caps, gloves, belts.

The contested goods are the following:

 

Class 25: Clothing; footwear; headgear; shirts; leather clothing; belts [clothing]; furs [clothing]; gloves [clothing]; scarves; neckties; hosiery; socks; slippers; beach shoes; athletics shoes; underwear; tee-shirts; hooded sweatshirts; sweat shirts.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

   

Clothing; footwear; headgear; shirts; scarves; neckties; socks; belts [clothing]; gloves [clothing] are identically contained in both lists of goods (including synonyms).

 

The contested leather clothing; furs [clothing]; hosiery; underwear; tee-shirts; hooded sweatshirts; sweat shirts are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested slippers; beach shoes; athletics shoes are included in the broad category of the opponent’s footwear of all types. Therefore, they are identical.

 

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 in question.

 

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is average (24/01/2019, T-785/17, Big Sam Clothing Company, EU:T:2019:29, § 48; 06/12/2018, T-817/16, V, EU:T:2018:880, § 61, 65).

 

 

c)  The signs

 

EM
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 ‘EM’ is a word mark. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are depicted in upper- or lower-case letters. The earlier mark does not deviate from the usual way of writing since it is entirely written in upper-case letters, which is a fairly common way of depicting words.

The contested sign is a figurative mark composed of a device consisting of three black horizontal quadrilateral shapes followed by a device of three red vertical quadrilateral shapes. In this regard, part of the relevant public is likely to recognise and identify the contested sign as stylised letters ‘EM’. Indeed, the three black, horizontal quadrilateral bars in the figurative device, due to their position and proportions, namely a shorter middle longitudinal shape between significantly longer top and bottom longitudinal shapes, resemble the horizontal bars of a stylised upper-case letter ‘E’ and are likely to be construed as such. In addition, a part of the public may recognise a highly stylised red letter ‘M’ in the contested sign, in particular, due to the slightly shorter middle quadrilateral shape, which might lead to such an interpretation. Furthermore, consumers instinctively look for a meaning when faced with a sign and are used to recognising words, even when they are depicted with a certain degree of fancifulness, as has occurred with the element ‘EM’ of the contested sign. Therefore, given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, the Opposition Division finds it appropriate to focus the examination on the part of the relevant public that will perceive the contested sign as a stylised verbal element ‘EM’.

Although the contested sign’s stylisation and its figurative elements have a certain degree of inherent distinctiveness, from a market perspective, the letters ‘EM’ has a stronger impact on the public under examination as an indicator of origin, because consumers are used to stylisations and will perceive and refer to the figurative sign through its verbal element. 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; 19/12/2011, R 233/2011‑4 BEST TONE (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The common verbal element ‘EM’ does not convey any clear and specific meaning in relation to the relevant goods in Class 25. Therefore, it is distinctive to a normal degree.

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

Visually, the signs coincide in the letter combination ‘EM’, which constitutes the earlier mark in its entirety and is the only verbal element of the contested sign. However, they differ in the rather embellished stylisation of the letters in the contested sign, which will not be completely overlooked or ignored by the relevant public.

Furthermore, the fact that one mark is entirely incorporated in the other mark establishes a certain degree of similarity between them (08/09/2010, T‑152/08, Scorpionexo, EU:T:2010:357, § 66; 08/09/2010, T‑369/09, Porto Alegre, EU:T:2010:362, § 26; 20/09/2011, T‑1/09, Meta, EU:T:2011:495; 28/09/2011, T‑356/10, Victory Red, EU:T:2011:543, § 26; 23/05/2007, T‑342/05, Cor, EU:T:2007:152; 10/11/2011, T‑313/10, Ayuuri Natural, EU:T:2011:653; 15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 55). In addition, the earlier mark is a word mark and the protection offered by the registration of a word mark applies to the word itself and not to the individual graphic or stylistic characteristics that the mark might possess. Therefore, it cannot be excluded that it could be stylised in a similar manner to the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘EM’, present identically in both signs. Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public under examination in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

  

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 under examination in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e)  Global assessment, other arguments and conclusion

 

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical. In cases where the goods are identical, the differences between the signs should be significant and relevant to a degree that allows consumers to safely distinguish the signs and to exclude the likelihood of confusion between them (see, to this effect, 13/11/2012, T-555/11, tesa TACK, EU:T:2012:594, § 53). The goods target the general public and the level of attention is average. The degree of inherent distinctiveness of the earlier mark is normal.

The signs are visually similar to a below-average degree, aurally identical and the conceptual aspect does not influence the assessment of the similarity of the signs. Account is 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).

According to settled case-law, generally speaking, 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 degree of visual similarity between signs designating goods in Class 25 is particularly relevant when assessing the likelihood of confusion between them, which, in the present case, was considered below-average. The differences between the signs caused by a relatively striking and elaborate stylisation of the contested sign are insufficient to counterbalance similarities between them, since this degree of stylisation is not of such a nature as to overshadow the perception of the verbal element ‘EM’. Furthermore, two marks are similar, from the point of view of the relevant public, when they are at least partly identical as regards one or more relevant aspects (29/01/2013, T 283/11, Nfon, EU:T:2013:41, § 41). In addition, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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). Likewise, the below-average degree of visual similarity is compensated by the identity of the goods and the aural identity between the signs. In addition, the conceptual comparison is not possible, which means that average consumers displaying an average degree of attention cannot rely on any conceptual differences in order to safely distinguish between the signs.

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 covered are from the same or economically linked undertakings.

Considering that incorporating a new stylisation and/or additional figurative elements to a mark’s lettering is standard market practice, and given the presence of the same distinctive element, ‘EM’, in both signs, it is highly conceivable that the relevant consumers 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 public under examination. 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 EUTM registration No 172 536 for the word mark ‘EM’. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed for the remaining non-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.

 

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

 

 

Liliya YORDANOVA

Anna PĘKAŁA

Lars HELBERT

 

 

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.