OPPOSITION Nо B 3 125 658

FARE Guenther Fassbender GmbH, Stursberg II 12, 42899 Remscheid, Germany (opponent), represented by Beyer Patent- und Rechtsanwälte, Am Dickelsbach 8, 40883 Ratingen, Germany (professional representative)

a g a i n s t

Totes Isotoner Corporation, 9655 International Boulevard, Cincinnati, Ohio 45246, United States of America (applicant), represented by Carpmaels & Ransford LLP, One Southampton Row, WC1B 5HA London, United Kingdom and Carpmaels & Ransford (Ireland) LLP, Harcourt Centre, Block 4 Harcourt Road, D02 HW77 Dublin, Ireland (professional representatives).

On 26/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 125 658 is partially upheld, namely for the following contested goods:

Class 18: Umbrellas, parasols.

2. European Union trade mark application No 18 219 705 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 06/07/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 219 705 ‘ECO ‘BRELLA’ (word mark), namely against some of the goods in Class 18. The opposition is based on German trade mark registration No 302 008 002 897 (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.

a) The goods

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

Class 18: Umbrellas.

The contested goods are the following:

Class 18: Bags; umbrellas, parasols.

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.

Umbrellas are identically contained in both lists of goods.

The contested parasols are types of sunshades. They usually have a round, cloth-covered frame on a stick, and are used for protection against the sun. The opponent’s umbrellas are portable devices used for protection against rain, snow, etc. and consist of a light canopy supported on a collapsible metal frame, mounted on a central rod. These goods are similar, since they have the same nature and purpose. They usually originate from the same producers and use the same distribution channels. Furthermore, they target the same relevant public.

However, the contested bags have nothing relevant in common with the opponent’s umbrellas, within the meaning of similarity required by Article 8(1)(b) EUTMR.

Bags are essentially strong containers with one or two handles, used to carry things. They do not satisfy the same needs as umbrellas, which as outlined above, are portable devices used for protection against, for example, rain or snow. Their natures, purposes and methods of use are different. Furthermore, these goods are neither in competition nor complementary.

In support of its arguments, the opponent refers to the judgment of the General Court, where similarity was found between bags and luggage on the one hand, and umbrellas, umbrella covers and parasols on the other (15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 35-36). The Opposition Division has taken the arguments of the Court into account. In particular, the Court agreed with the Board’s finding that all of the abovementioned articles belonged to the category of ‘travel accessories’, and that, despite being different in nature and purpose, they were likely to be sold in the same outlets or in the same sections of department stores and under the same mark.

The Opposition Division finds that, although the goods under comparison target the same public and can conceivably share the same distribution channels (e.g. shops dealing in travellers’ goods and accessories), these factors on their own cannot lead to the finding of any relevant degree of similarity. What matters more here is that the relevant public does not expect the goods to be made by the same manufacturers. Indeed, there is a vast difference in the raw materials, equipment, manufacturing techniques and know-how entailed in the production of any kind of bag compared to those related to the manufacture of umbrellas. It is not customary for these goods to originate from the same companies. Furthermore, the mere fact that some manufacturers may produce both categories of goods is not sufficient to demonstrate that a large part of the manufacturers or distributors of those goods are the same as required (23/01/2014, T‑221/12, Sun fresh, EU:T:2014:25, § 91). In the present case, in the absence of evidence or convincing arguments in this regard, the Opposition Division does not see a valid basis for concluding that the goods under comparison usually originate from the same manufacturers and are sold under the same mark.

Therefore, the contested bags are dissimilar to the opponent’s umbrellas (23/04/2021, R 1466/2020‑4, Bomonti (fig.) / MONTY beauty (fig.) et al., § 26).

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 considered to be average.

c) The signs

	ECO ‘BRELLA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is a figurative mark comprising the combination of verbal elements ‘ÖkoBrella’, depicted in fairly standard typeface, in a combination of upper- and lower-case letters. ‘Öko’ is depicted in bold and ‘BRELLA’ in narrow letters.

The contested sign is a word mark comprising the verbal elements ‘ECO’ and ‘BRELLA’, written in upper-case letters, and separated by a space and an apostrophe.

The earlier mark’s verbal element ‘Öko’ is an abbreviation for the German words ‘ökologisch’ (meaning ‘ecological’) and/or ‘ökonomisch’ (meaning ‘economic’).

The contested sign’s verbal element ‘ECO’ is a commonly used abbreviation in English for ‘ecology’ or ‘ecological’. It is a well-known fact that ‘eco’ is widely used throughout the European Union to mean ‘ecological’ (10/09/2018, R 188/2018‑2, EcoAqua (fig.) / ECOWATER et al., § 21). However, ‘ECO’ can also be used as an abbreviation in English for ‘economy’, ‘economic’, etc.

Accordingly, a substantial part of the relevant public will perceive both the earlier mark’s ‘Öko’ and the contested sign’s ‘ECO’ as short forms for ‘ecology’/‘ecological’ or ‘economy’/‘economic’, and will attribute these meanings to the relevant goods in the sense of being environmentally friendly or low-cost. Hence, both elements are non-distinctive for the goods at issue, since they clearly describe their characteristics.

The common element ‘BRELLA’ has no meaning for the relevant public and is, therefore, distinctive in relation to the relevant goods.

Neither sign has a dominant element. The earlier mark’s verbal elements each occupy the same proportion of the sign. The bold letters of the element ‘Öko’ are counterbalanced by the longer element BRELLA, although in narrow letters. The contested sign is a word mark. Word marks have no dominant elements because, by definition, they are written in standard typeface.

Visually, the signs coincide in the distinctive element ‘BRELLA’, albeit depicted in title-case letters in the earlier mark as opposed to upper-case letters in the contested sign. The difference in the depictions of these letters has only a very minor impact on the comparison, because the earlier mark is depicted in fairly standard typeface, where the letters are readily perceptible. Furthermore, the contested sign is a word mark, and in the case of word marks, the word itself is protected and not its written form. Therefore, it is irrelevant whether the marks are written in upper- or lower-case letters, or in a combination thereof (as long as the combination does not depart from the usual rules of capitalisation).

Although the signs differ in the additional elements ‘Öko’ of the earlier mark versus ‘ECO’ of the contested sign, it must be borne in mind that these elements are non-distinctive. Furthermore, they share their third letter, ‘O’.

The signs also differ in that the contested sign comprises two words separated by a space and an apostrophe. However, this does not create a major visual difference vis-à-vis the earlier mark because the latter has a similar visual structure due to the graphical separation of its clearly perceptible word elements.

Therefore, the signs are visually highly similar.

Aurally, the letter ‘Ö’ in German is pronounced as a closed ‘E’ and the letter ‘C’ is pronounced as ‘K’. Therefore, the pronunciation of the differing letters in the elements ‘Öko’ and ‘ECO’ is almost the same for the relevant public. The signs’ pronunciations coincide in the sounds forming the common element, ‘BRELLA’. The presence of the apostrophe in the contested sign will not create any audible difference, and the contested sign, ‘ECO ‘BRELLA’, will be pronounced as two words, in a very similar way as the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept evoked by the verbal elements ‘Öko’/‘ECO’. Since the concepts underlying these elements are non-distinctive, this coincidence can only lead to a low degree of conceptual similarity.

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 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 despite the presence of a non-distinctive element, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are partly identical, partly similar, and partly dissimilar. Those found to be identical or similar target the general public, whose degree of attention is average. The earlier mark has a normal degree of inherent distinctiveness in relation to the goods at issue.

Account should 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).

The signs are visually and aurally highly similar, and conceptually similar to a low degree. Although the signs essentially differ in their initial parts, it should be noted that the differentiating elements, whilst non-distinctive, evoke the same concepts and result in a degree of conceptual similarity between the signs, albeit low. The Opposition Division considers that the presence of these elements, constituting minor differences, is clearly insufficient to safely distinguish the marks given the coincidence in the element ‘BRELLA’, which is the distinctive element in both signs.

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

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

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

Solveiga BIEZA

Agnieszka PRZYGODA

Catherine MEDINA

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.