OPPOSITION No B 2 226 432

Bonamitex International Holding B.V., Molenvlietweg 6, 1432 GW Aalsmeer, Netherlands (opponent), represented by Bastiaan Willem Jasper van den Bogaard, Lange Heul 193, 1403 NJ Bussum, Netherlands (professional representative)

a g a i n s t

Junkfood Clothing LLC, 10711 Walker Street, 90630 Cypress, United States (applicant), represented by Boult Wade, S.L., Avda. de Europa, 26, Edif. Ática 5, Planta 2, 28224 Pozuelo de Alarcón (Madrid), Spain (professional representative).

On 25/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 226 432 is partially upheld, namely for the following contested goods:

Class 25: Clothing, footwear, headgear; Anti-sweat underwear; Aprons [clothing]; Ascots; Babies' pants [clothing]; Bandanas [neckerchiefs]; Bath robes; Bath sandals; Bath slippers; Bathing caps; Bathing trunks; Beach clothes; Beach shoes; Belts [clothing]; Berets; Bibs, not of paper; Boas [necklets]; Bodices [lingerie]; Boots; Boots for sports; Brassieres; Breeches for wear; Camisoles; Caps [headwear]; Chasubles; Clothing; Clothing for gymnastics; Clothing of imitations of leather; Clothing of leather; Coats; Collar protectors; Combinations [clothing]; Corselets; Corsets [underclothing]; Cuffs; Cyclists' clothing; Detachable collars; Dresses; Dressing gowns; Ear muffs [clothing]; Esparto shoes or sandals; Fishing vests; Football boots; Footmuffs, not electrically heated; Footwear; Fur stoles; Furs [clothing]; Gabardines [clothing]; Gaiter straps; Galoshes; Garters; Girdles; Gloves [clothing]; Gymnastic shoes; Half-boots; Hats; Headbands [clothing]; Headgear for wear; Hoods [clothing]; Hosiery; Inner soles; Jackets [clothing]; Jerseys [clothing]; Jumper dresses; Knitwear [clothing]; Lace boots; Layettes [clothing]; Leg warmers; Leggings [trousers]; Liveries; Maniples; Mantillas; Masquerade costumes; Miters [hats]; Mittens; Money belts [clothing]; Motorists' clothing; Muffs [clothing]; Neckties; Outerclothing; Pants; Paper clothing; Paper hats [clothing]; Parkas; Pelerines; Pelisses; Petticoats; Pocket squares; Ponchos; Pullovers; Pyjamas; Ready-made clothing; Sandals; Saris; Sarongs; Sashes for wear; Scarfs; Shawls; Shirts; Shoes; Short-sleeve shirts; Shoulder wraps; Shower caps; Singlets; Ski boots; Ski gloves; Skirts; Skorts; Skull caps; Sleep masks; Slippers; Slips [undergarments]; Smocks; Sock suspenders; Socks; Spats; Sports shoes; Stocking suspenders; Stockings; Studs for football boots; Stuff jackets [clothing]; Suits; Suspenders; Sweat-absorbent stockings; Sweaters; Swimsuits; Teddies [undergarments]; Tee-shirts; Tights; Togas; Top hats; Topcoats; Trousers; Turbans; Underpants; Underwear; Uniforms; Veils [clothing]; Vests; Visors [headwear]; Waterproof clothing; Wet suits for water-skiing; Wimples; Wooden shoes.

2. European Union trade mark application No 11 769 809 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 11 769 809 (figurative mark). The opposition is based on European Union trade mark registration No 11 159 787  (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: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols and walking sticks; Whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing, footwear, headgear; Anti-sweat underwear; Aprons [clothing]; Ascots; Babies' pants [clothing]; Bandanas [neckerchiefs]; Bath robes; Bath sandals; Bath slippers; Bathing caps; Bathing trunks; Beach clothes; Beach shoes; Belts [clothing]; Berets; Bibs, not of paper; Boas [necklets]; Bodices [lingerie]; Boot uppers; Boots; Boots for sports; Brassieres; Breeches for wear; Camisoles; Cap peaks; Caps [headwear]; Chasubles; Clothing; Clothing for gymnastics; Clothing of imitations of leather; Clothing of leather; Coats; Collar protectors; Combinations [clothing]; Corselets; Corsets [underclothing]; Cuffs; Cyclists' clothing; Detachable collars; Dress shields; Dresses; Dressing gowns; Ear muffs [clothing]; Esparto shoes or sandals; Fishing vests; Fittings of metal for footwear; Football boots; Footmuffs, not electrically heated; Footwear; Footwear uppers; Fur stoles; Furs [clothing]; Gabardines [clothing]; Gaiter straps; Galoshes; Garters; Girdles; Gloves [clothing]; Gymnastic shoes; Half-boots; Hat frames [skeletons]; Hats; Headbands [clothing]; Headgear for wear; Heelpieces for footwear; Heelpieces for stockings; Heels; Hoods [clothing]; Hosiery; Inner soles; Jackets [clothing]; Jerseys [clothing]; Jumper dresses; Knitwear [clothing]; Lace boots; Layettes [clothing]; Leg warmers; Leggings [trousers]; Liveries; Maniples; Mantillas; Masquerade costumes; Miters [hats]; Mittens; Money belts [clothing]; Motorists' clothing; Muffs [clothing]; Neckties; Non-slipping devices for footwear; Outerclothing; Pants; Paper clothing; Paper hats [clothing]; Parkas; Pelerines; Pelisses; Petticoats; Pocket squares; Pockets for clothing; Ponchos; Pullovers; Pyjamas; Ready-made clothing; Ready-made linings [parts of clothing]; Sandals; Saris; Sarongs; Sashes for wear; Scarfs; Shawls; Shirt fronts; Shirt yokes; Shirts; Shoes; Short-sleeve shirts; Shoulder wraps; Shower caps; Singlets; Ski boots; Ski gloves; Skirts; Skorts; Skull caps; Sleep masks; Slippers; Slips [undergarments]; Smocks; Sock suspenders; Socks; Soles for footwear; Spats; Sports shoes; Stocking suspenders; Stockings; Studs for football boots; Stuff jackets [clothing]; Suits; Suspenders; Sweat-absorbent stockings; Sweaters; Swimsuits; Teddies [undergarments]; Tee-shirts; Tights; Tips for footwear; Togas; Top hats; Topcoats; Trousers; Turbans; Underpants; Underwear; Uniforms; Veils [clothing]; Vests; Visors [headwear]; Waterproof clothing; Welts for footwear; Wet suits for water-skiing; Wimples; Wooden shoes.

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 25

Clothing, footwear, headgear; clothing; footwear are identically contained in both lists of goods.

The contested anti-sweat underwear; aprons [clothing]; ascots; babies' pants [clothing]; bandanas [neckerchiefs]; bath robes; bathing trunks; beach clothes; belts [clothing]; bibs, not of paper; boas [necklets]; bodices [lingerie]; brassieres; breeches for wear; camisoles; chasubles; clothing for gymnastics; clothing of imitations of leather; clothing of leather; coats; collar protectors; detachable collars; cuffs; combinations [clothing]; corselets; corsets [underclothing]; cyclists' clothing; footmuffs, not electrically heated; fur stoles; furs [clothing]; gabardines [clothing]; garters; dresses; dressing gowns; ear muffs [clothing]; fishing vests; girdles; gloves [clothing]; hoods [clothing]; hosiery; jackets [clothing]; jerseys [clothing]; jumper dresses; knitwear [clothing]; layettes [clothing]; leg warmers; leggings [trousers]; liveries; maniples; mantillas; masquerade costumes; mittens; money belts [clothing]; motorists' clothing; muffs [clothing]; neckties; outerclothing; pants; paper clothing; parkas; pelerines; pelisses; petticoats; pocket squares; ponchos; pullovers; pyjamas; ready-made clothing; saris; sarongs; sashes for wear; scarfs; shawls; singlets; shirts; short-sleeve shirts; shoulder wraps; ski gloves; skirts; skorts; slips [undergarments]; smocks; socks; sock suspenders; spats; stockings; stocking suspenders; stuff jackets [clothing]; suits; suspenders; sweat-absorbent stockings; sweaters; swimsuits; teddies [undergarments]; tee-shirts; tights; togas; topcoats; trousers; underpants; underwear; uniforms; veils [clothing]; vests; waterproof clothing; wet suits for water-skiing; wimples are various pieces of clothing and therefore included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested bath sandals; bath slippers; beach shoes; boots; boots for sports; esparto shoes or sandals; football boots; galoshes; gymnastic shoes; half-boots; lace boots; sandals; shoes; ski boots; slippers; sports shoes; wooden shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested berets; paper hats [clothing]; caps [headwear]; hats; headgear for wear; headbands [clothing]; miters [hats]; top hats; visors [headwear]; shower caps; bathing caps; skull caps; turbans are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested inner soles are similar to the opponent’s footwear. They may coincide in producers, distribution channels and relevant public. Moreover, they are complementary.

Also the contested studs for football boots are similar to the opponent’s footwear. They are complementary and may coincide in producers, distribution channels and relevant public.

Gaiters cover the tops of your footwear to fully protect your feet from the elements. The contested gaiter straps are accessories to these and at least lowly similar to the opponent’s footwear. They may have the same producers, distribution channels and relevant public.

The contested sleep masks are similar o a low degree to the opponent’s clothing. They can have the same producers and distribution channels.

However, the contested boot uppers; fittings of metal for footwear; footwear uppers; hat frames [skeletons]; heelpieces for footwear; heelpieces for stockings; heels; non-slipping devices for footwear; ready-made linings [parts of clothing]; pockets for clothing; dress shields; cap peaks; shirt fronts; shirt yokes; soles for footwear; tips for footwear; welts for footwear are specific parts of clothes; footwear and headwear which have no relevant points in common with the opponent's goods in Class 25, since they have different purposes, methods of use, distribution channels, relevant public and producers. In addition, they are not complementary or in competition. Moreover, they do not have anything in common with the opponent’s goods in Class 18, for the same reasons. Therefore, they are dissimilar to all the opponent’s goods.

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 to varying degrees are directed at the public at large. The degree of attention is average.

c) The signs

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 earlier mark is a pure figurative mark consisting of the stylisation of a clenched hand with two fingers pointing upright on the right side. It is stylised in the colours of the flag of the United States of America, namely in red and white stripes with the upright fingers in dark blue with eight white stars.

The contested sign also consists of a clenched hand with two fingers upright, however on the left side, stylised as the American flag with the hand in red and white stripes and the two upright fingers in light blue with nine white stars. Underneath this hand are the words ‘JUNK FOOD’ in light blue upper case letters with a red peace mark between the two words, and all is placed on a light grey background.

The light grey background is essentially decorative, since it merely acts as a background and is, therefore, less distinctive. The verbal element ‘JUNK FOOD’ will, at least by the English-speaking public, be understood as food that is quick and easy to prepare, but is not good for your health (information extracted from Collins English Dictionary on 11/3/2020 at https://www.collinsdictionary.com/dictionary/english/junk-food). It is distinctive, as it has no direct meaning in relation to the relevant goods. For the part of the public that does not perceive any meaning in this verbal element, it is also distinctive.

The ‘peace mark’ between the two words in the contested sign will be perceived as such. It has no meaning in relation to the relevant goods and is therefore distinctive.

The figurative element of the hands in both marks will be perceived as a ‘victory sign’ or a ’peace sign’ by the relevant public. It is distinctive as such, as it has no meaning in relation to the goods in question. However, the colours of both marks refer to the flag of the United States of America, as described above. Bearing in mind that the relevant goods are clothes, footwear and headwear, the colours and their stylisation as a flag are therefore weak, because they allude to the geographical origin of the goods.

Regarding the figurative elements of the contested sign, it should be pointed out that,

in principle, figurative elements of signs have a lesser impact in their overall impressions than their verbal elements, because the public tends to refer to trade marks by their verbal elements rather than by describing their figurative components.

Nevertheless, in the present case, the figurative element cannot be ignored, since it occupies more than half of the contested mark’s space and has a striking position on top of the sign. In that regard, it is recalled that the verbal element of a sign does not automatically have a stronger impact (31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative elements of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). In light of the above, the Opposition Division finds that the figurative element in the contested sign, albeit – as a whole - lacking any clear meaning in relation to the goods at issue, has at least the same weight as that of the sign’s verbal element.

Visually, the signs coincide in the figurative element of a hand in the colour and stylisation of the American flag, as described above. It is distinctive as a whole. However, the marks differ in the sense that the respective stylisation of the hand is mirrored to the other, in one additional star in the contested sign and moreover, somewhat in the shades of the colours of the marks. Furthermore, the marks differ in the distinctive verbal element ‘JUNK FOOD’, in the distinctive element of a peace sign and in the light grey background, which is however less distinctive, of the contested sign.

Therefore, the signs are visually similar to an above average degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the figurative element of the hand, stylised and in the colours of the American flag, as described above, included in both signs, will be associated with the meaning explained above. This element is distinctive as a whole. To that extent, the signs are conceptually highly similar.

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

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.

In the present case, the goods are partly identical, partly similar to varying degrees and partly dissimilar. They are directed at the public at large with an average degree of attention.

The signs are visually similar to an above average degree and conceptually highly similar, whereas an aural comparison is not possible. The inherent distinctiveness of the earlier mark is normal.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees, also them similar to only a low degree, to those of the earlier trade mark. The similarity between the marks outweighs the low similarity of these goods.

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) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

Since the opposition is partially 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 and in relation to identical and similar goods. 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. 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

Anna BAKALARZ

Lena FRANKENBERG GLANTZ

Katarzyna ZANIECKA

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.