OPPOSITION No B 2 259 615

MSG Merkur Shoe Group GmbH, Kreuzstraße 2a, 55543 Bad Kreuznach, Germany (opponent), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative)

a g a i n s t

Pedro Pablo Porto Taboada, Avd Sant Jordi 29 1ºb, 07800 Ibiza, Spain (applicant), represented by Colegio Abogados Pontevedra, Serafin Pazo Nº 27 1º C, 36680 A Estrada, Spain (professional representative).

On 27/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 259 615 is upheld for all the contested goods, namely:

Class 25: Clothing, footwear, headgear; shoes.

2. European Union trade mark application No 11 892 924 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 892 924, namely against all the goods in Class 25. The opposition is based on German trade mark registration No 39 622 657. 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.

1. The goods

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

Class 25: Footwear.

The contested goods are the following:

Class 25: Clothing, footwear, headgear; 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.

Footwear is identically contained in both lists of goods and services. Therefore, they are identical.

The contested shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

Goods in Class 25, namely clothing, footwear and headgear, are identical or very similar in nature. They serve the same purpose, since they are used to cover and protect various parts of the human body against the elements. They are also fashion items and are often found in the same retail outlets. Consumers, when seeking to purchase clothes, will expect to find footwear and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items. Therefore, these goods are similar.

Therefore, in the light of the above, the contested clothing; headgear are similar to the opponent’s footwear.

2. 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.

3. The signs

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 contested sign is a figurative mark consisting of the elements ‘I3IZA’ in standard font against a black rectangular background. It is worth stressing that is not necessary for a word to be written properly for its semantic content to be perceived by the relevant public. Therefore, due to the similarity between the number ‘3’ and the letter ‘B’ and given that in the market stylised letters are often used as part of trade marks, the relevant public will easily perceive the number ‘3’ as the letter ‘B’, thus comprehending the word ‘IBIZA’. This verbal element will be understood by the relevant German-speaking consumers as a Balearic island. Furthermore, under the letter ‘A’ of this element the verbal element ‘by PORTO’ is portrayed in a standard white font, the size of which is about one-fifth of the element ‘I3IZA’. This element will be understood by German-speaking consumers as referring to products originating from or created by Porto, as the English word ‘by’ is commonly used to identify the agent performing an action or denoting an action and is commonly used in trade.

The earlier mark is a figurative mark consisting of the verbal element ‘IBIZA’ in stylised bold upper case letters. It will be understood as having the same meaning as the element ‘I3IZA’ in the contested mark,.

The marks under comparison have no elements that could be considered clearly more distinctive than other elements.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The element ‘I3IZA’ in the contested sign is the dominant element, as it is the most eye-catching.

Visually, the earlier sign ‘IBIZA’ coincides in the first letter, ‘I’, and in the final three letters, ‘IZA’, with the contested sign’s dominant element, ‘I3IZA’. However, while the earlier sign has ‘B’ as its second letter, the contested mark has the number ‘3’. Notwithstanding the differences between these two elements, it cannot be overlooked that there is a certain degree of visual similarity between them. In addition, the signs differ in the contested mark’s secondary element, ‘by PORTO’, and in their figurative depiction. However, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are highly similar.

Aurally, provided that the German-speaking consumers will recognise the number ‘3’ of the contested sign’s dominant element ‘I3IZA’ as the letter ‘B’, the pronunciation of the signs coincides in the sound of the letters ‘IBIZA’, present identically in both signs. The pronunciation differs in the sound of the letters ‘by PORTO’ of the contested mark, which is, however, a secondary element.

Therefore, the signs are highly similar.

Conceptually, the public in the relevant territory will perceive the element ‘IBIZA’, which will be recognised in both signs, as the name of a Balearic island. In addition, the secondary element, ‘by PORTO’, present only in the contested sign, will be understood as referring to products originating from or created by Porto, as the English word ‘by’ is commonly used to identify the agent performing an action or denoting an action and is commonly used in trade.

As the signs will be associated with similar meanings, the signs are conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 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.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

A likelihood of confusion on the part of the public must be assessed globally. Such a global assessment implies some interdependence between the factors taken into account and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question and 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; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

In the present case, the goods target the public at large and the degree of attention is average. The signs are visually and aurally highly similar and conceptually similar, whereas the goods are partly identical and partly similar. Furthermore, the earlier sign has a normal degree of distinctiveness.

The differences between the signs lie in the secondary element, ‘by PORTO’, of the contested mark, in the limited visual difference between the second letter ‘B’ of the earlier sign, ‘IBIZA’, and the number ‘3’ of the contested mark’s dominant element, ‘I3IZA’, and, finally, in the graphical depiction of the signs.

This fact is counterbalanced by other relevant factors. Indeed, the earlier sign, ‘IBIZA’, is aurally and conceptually identical and visually highly similar to the contested sign’s dominant element, namely ‘I3IZA’. Therefore, given that for the goods under comparison the visual aspect plays a greater role in the global assessment of the likelihood of confusion and that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, the Opposition Division considers that the abovementioned differences between the signs are not sufficient to safely exclude a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 39 622 657. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Andrea VALISA

Karin KUHL

Judit NÉMETH

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.