OPPOSITION No B 1 913 733
Abercrombie & Fitch Europe Sagl, Via Moree, 6850 Mendrisio, Switzerland (opponent), represented by Boesling IP Rechtsanwälte PartG mbB, Große Elbstraße 86, 22767 Hamburg, Germany (professional representative)
a g a i n s t
Sun Cali Inc., 90 Madison St., # 401 80206, Denver, United States of America (applicant), represented by GEVERS, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative).
On 28/09/2020, the Opposition Division takes the following
1. Opposition No B 1 913 733 is upheld for all the contested goods and services.
2. European Union trade mark application No 10 154 921 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 154 921 for the figurative mark . The opposition is based on, inter alia, international registration No 1 057 923 designating the European Union for the word mark ‘CLUB CALI’, in relation to which the opponent invoked Article 8(1)(b) EUTMR.
Change of the opponent’s legal form
The opposition filed on 06/10/2011 was originally signed by Abercrombie & Fitch Europe SA with its seat in Mendrisio, Switzerland. However, in 2015, already after the opposition was filed, the opponent’s legal form was changed to Abercrombie & Fitch Europe Sagl seated in Mendrisio, Switzerland.
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 international registration No 1 057 923 designating the European Union.
a) The goods and services
The services on which the opposition is based are the following:
The contested goods and services are the following:
Class 18: Handbags.
Class 25: Women’s clothing, namely, lingerie, bras, panties, bustiers, body suits, nightgowns, bathrobes, camisoles, dresses, t-shirts, blouses, sweaters, jeans, suits, jackets, skirts, swimming suits, sundresses, sun cover ups, and wraps; shoes; children’s clothing; men’s clothing, namely, shirts, sweaters, scarves, ties, neckties, hats, caps, and sweat shirts.
Class 35: Retail store services featuring clothing, shoes, and handbags.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’, used in the applicant’s list of goods in Class 25 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.
It is also 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. These factors are known as the ‘Canon Criteria’ (29/09/1998, C‑39/97, Canon, EU:C:1998:442).
Contested goods in Classes 18 and 25
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.
There is also 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.
The contested handbags are included in the broad category of bags covered by the opponent’s retail store services featuring bags. Therefore, and bearing in mind the aforementioned rules, these contested goods are similar to an average degree to the opponent’s retail store services featuring bags in Class 35.
The contested goods in Class 25 are various items of clothing, shoes and headgear. Shoes serve the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar. Headgear and clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements, and target the same public. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Moreover, many manufacturers and designers will design and produce both clothing and headgear. Taking all these factors into account, headgear and clothing are considered similar.
Since all of the contested goods in Class 25 are either identical or similar to clothing, covered by the opponent’s retail store services featuring clothing, all these contested goods are considered at least similar to a low degree to the opponent’s retail store services featuring clothing in Class 35.
Contested services in Class 35
Retail store services featuring clothing are identically included in both list of services.
The contested retail store services featuring shoes, and handbags are highly similar to the opponent’s retail store services featuring clothing. Retail services of specific goods and retail services of other specific goods have the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Similarity is found between the retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. These conditions are fulfilled in the present case, since the goods subject to the retail services in question are commonly brought together by the same retailers, they are sold together in the same places and are of interest to the same relevant public. Given the close proximity which exists between the goods sold in the retail services in question, the degree of similarity between them is high.
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 various degrees are directed at the public at large. The degree of attention of this public is average.
c) The signs
Earlier trade mark
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 signs may be understood or associated with certain meanings in those countries where English is understood. This affects the perception of the signs by that public (in particular their conceptual understanding), and the assessment of likelihood of confusion in these territories, as explained below. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, in Ireland, Malta, and the United Kingdom.
The earlier word mark is composed of two elements ‘CLUB CALI’. 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).
The contested sign is a figurative mark composed of two verbal elements ‘SUN CALI’ in black slightly italic upper-case letters with a little black heart instead of the dot above the letter ‘I’. All these elements are inscribed inside a large heart with black edges.
The stylisation of the contested sign’s verbal elements is standard and non-distinctive. The heart devices are not particularly distinctive either, since they are not much more than simple, commonplace, and banal figures, of the type used in countless contexts (04/03/2016, R 804/2015-2, AMO (FIG.) / AM (FIG.), § 32). Given the wide variety of shapes used in the clothing and bags sectors, the graphic representation of a heart does not stand out to such an extent that it specifically attracts the consumer’s attention. The consumer will only see a decorative arrangement which he will neither accord particular attention to nor go to the trouble of analysing (22/09/2016, T‑512/15, SUN CALI (fig.), EU:T:2016:527, § 62).
Moreover, as regards the figurative elements of the contested sign, 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).
The earlier mark’s word ‘CLUB’ may be understood as a noun indicating, inter alia, ‘a closed group or association of people with common aims or interests or dedicated to a particular activity’. As correctly argued by the opponent, this element will be seen as suggesting a certain prestige or exclusivity of the opponent’s retail store services, for example, that they are provided only for members of a certain or unique group, that the goods have a prestigious and luxurious character, and that they are offered on an exclusive basis or for a cheaper price. Therefore, the inherent distinctiveness of this element is limited (02/07/2020, R 2995/2019-5, Salmon club / Salmos et al., § 71; 29/01/2020, R 499/2019‑2, COFFEA CLUB (fig.) / Cofféa torréfacteurs passionnés (fig.) et al, § 40; 08/11/2019, R 1262/2019-4, Pet health club, § 2, 17; 02/05/2017, R 1158/2016‑4, Safari Club / WS Walk Safari (fig.) § 17).
The contested sign’s English word ‘SUN’ may be understood as a noun, meaning ‘the star around which the earth orbits’ or ‘the light or warmth received from the earth’s sun’ or as a verb, ‘(sun oneself) Sit or lie in the sun’ or ‘expose (something) to the sun, especially to warm or dry it’ (information extracted from Lexico Dictionary on 17/09/2020 at www.lexico.com/en/definition/sun). As it may allude to sunny weather and light, summer versions of the contested goods (or goods offered through the contested services), such as sundresses or sun hats, its inherent distinctiveness is somewhat limited for these goods and services (see EUIPO’s Cancellation Division: 17/03/2014, No 7163 C, SUN CALI (fig.); confirmed by 03/06/2015, joined cases R 1260/2014‑5 and R 1281/2014‑5 22/09/2016, SUN CALI (fig.), § 45; confirmed by T‑512/15, SUN CALI (fig.), EU:T:2016:527).
The coinciding element ‘CALI’ is meaningless as such, however, an important part of the English-speaking public will most likely recognise it as an informal abbreviation for ‘California’, a state in the United States (03/06/2015, joined cases R 1260/2014‑5 and R 1281/2014‑5 22/09/2016, SUN CALI (fig.), § 45; confirmed by T‑512/15, SUN CALI (fig.), EU:T:2016:527, § 72-74). The Opposition Division will focus on this part of the public only. Although ‘CALI’ alludes to a certain geographical area, it is only an informal abbreviation thereof and it has no obvious meaning in relation to the relevant goods and services (by analogy, 15/11/2013, R 448/2013‑2, MALIBU Sun by Phenomenon (fig.) / Malibu et al., § 26). Therefore, it is considered that ‘CALI’ is the most distinctive element of the signs at issue.
The signs have no elements that could be considered clearly more dominant (eye-catching) than other elements.
Visually and aurally, the signs coincide in their most distinctive element, ‘CALI’, which constitutes their second (verbal) elements. This coinciding part will be pronounced in exactly the same way. The signs differ in their first verbal elements and their sounds, namely ‘CLUB’ in the earlier mark and ‘SUN’ in the contested sign. They will, as a whole, be pronounced in three syllables of very similar lengths, with the two final syllables identical, ‘CLUB-CA-LI’ and ‘SUN-CA-LI’.
Although the differing elements are located at the beginning of the signs, namely in the part which usually attracts the attention of the public more, they are considered less distinctive than the coinciding word ‘CALI’. It is noted that the public perceives more easily on elements that are more distinctive. Moreover, the differing elements are either of the same size (‘CLUB’) or shorter (‘SUN’) than the coinciding part. Therefore, the differences at their beginnings are not sufficient to dominate the overall impression given by the signs (T‑512/15, SUN CALI (fig.), EU:T:2016:527, § 68). Consequently, ‘CLUB’ in the earlier mark and ‘SUN’ in the contested sign do not attract the relevant public’s attention more than the element ‘CALI’, which follows them (23/10/2015, T‑96/14, VIMEO / MEO (fig.) et al., EU:T:2015:799, § 35).
Moreover, the contested sign differs (visually) in its heart devices which, however, are not particularly distinctive and have only limited impact on the perception of the signs. The stylisation of the contested sign’s verbal elements is standard and, in any event, less relevant in view of the verbal nature of the earlier mark which may be stylised in various ways. Purely figurative elements of the contested sign are not subject to a phonetic assessment.
Overall, bearing in mind especially the distinctiveness of their particular elements, the signs are visually and aurally similar to a below-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 same meaning evoked by the coinciding element ‘CALI’ and differ in the concepts evoked by their first elements, ‘CLUB’ and ‘SUN’, respectively, which are, however, less distinctive. The contested sign differs in the concept evoked by the heart devices which have no counterpart in the earlier mark, but which will not attract much consumers’ attention. Therefore, 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.
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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark as a whole must be seen as normal, despite the presence in that mark of an element with a limited degree of distinctiveness, as stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all the factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
The contested goods in Classes 18 and 25 are at least similar to a low degree or similar to an average degree, while the contested services in Class 35 are identical or highly similar to the opponent’s services.
The signs are visually and aurally similar to a below-average degree, and are conceptually similar to an average degree. The earlier trade mark has a normal degree of distinctiveness for the relevant public, namely the public at large displaying an average degree of attention. Account is also 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 case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspect (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30).
The most distinctive element of the earlier mark, ‘CALI’, is entirely and without modifications incorporated in the contested sign, where it occupies the same (second) position and plays an independent distinctive role. All the remaining elements of the marks, including their respective beginnings, ‘CLUB’ and ‘SUN’, are less distinctive and, therefore, they will not attract more attention of the relevant public than the coinciding word ‘CALI’. In the Opposition Division’s opinion, their presence at the beginning of the signs is not considered sufficient to allow the consumers to safely distinguish between the marks and to exclude a likelihood of confusion.
While the public will not overlook that the signs differ in certain elements, in particular in their first elements, likelihood of confusion includes the likelihood of association, which is especially relevant in the present case. It 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. Even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, owing to the use of the identical and meaningful word ‘CALI’, that they are derived from the same undertaking or economically linked undertakings.
The relevant goods and services belong to a market sectors in which it is common to create sub-brands, namely variations of the main brand that include different motifs. Indeed, manufacturers of the contested goods in Classes 18 and 25 often provide sales of their products either on-line or through brick and mortar stores under the same or similar signs. It is therefore conceivable that the targeted public may regard the goods and services designated by the conflicting signs as belonging to two, admittedly distinct, ranges of goods and services, originating, none the less, from the same manufacturer (18/02/2004, T‑10/03, Conforflex, EU:T:2004:46, § 61; 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). For example, consumers could be led to believe that the owner of the earlier mark, ‘CLUB CALI’, designating retail store services featuring clothing and bags, offered on some favourable or exclusive basis to the members of the ‘club’, started yet another line of goods and services in Classes 18, 25 and 35 focusing specifically on light products for the summer.
Considering all the above, the differences between the signs are not sufficient to counteract their similarities and there is a likelihood of confusion, in the form of a likelihood of association, for the part of the relevant public (i.e. the part of the English-speaking public at large for whom ‘CALI’ will evoke the same concept). This applies also for the goods and services that are similar to (at least) a low degree.
Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s international registration No 1 057 923 designating the European Union. It follows that the contested trade mark must be rejected in its entirety.
As earlier international registration No 1 057 923 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
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.