18



DECISION

of the First Board of Appeal

of 7 July 2016

In Case R 1518/2015-1

Wahebo Services B.V.

Lelienhuyze 3

5221 PE 'S-HERTOGENBOSCH

Netherlands



Applicant / Appellant

represented by BOGAERTS & GROENEN ADVOCATEN, Postbus 127,
5280AC Boxtel, Netherlands

v

Carmen Noguera Fusellas

Calle Prat de la Riba, 26

08770 Sitges

Spain



Opponent / Respondent

represented by AGUILAR I REVENGA, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain



APPEAL relating to Opposition Proceedings No B 2 430 588 (European Union trade mark application No 12 930 004)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), M. Bra (Rapporteur) and Ph. von Kapff (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

  1. By an application filed on 02 June 2014, Wahebo Services B.V. (‘the applicant’) sought to register the figurative as amended

for the following list of goods:

Class 14 - Jewellery, precious stones; horological and chronometric instruments; key rings [trinkets or fobs]; bag charms; cellular phone accessory charms;

Class 18 - Leather and imitation leather; animal skins, hides; trunks and travelling bags; umbrellas, big umbrellas and walking sticks; whips, harness and saddlery; pouches for holding makeup; toiletry bags; satchels; rucksacks; coin purses; bags for laptops and bags of all kinds made of leather and imitations of leather;

Class 25 - Clothing, footwear, headgear; gloves; shawls.

  1. The application was published on 30 July 2014.

  2. On 28 October 2014, Carmen Noguera Fusellas (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods.

  3. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

  4. The opposition was based on the following earlier rights:

  • European Union trade mark No 13 417

filed on 1 April 1996 and registered on 1 February 1999 with an expected expiry date of 1 April 2026 for the following goods and services:

Class 25 – Sweaters; jerseys; waistcoats; jackets; skirts; trousers; shirts; blouses; dressing gowns; underwear; gowns; bathing costumes; raincoats; dresses; stockings; socks; scarves; neckties, headgear and gloves (clothing);

  • European Union trade mark No 1 316 215

filed on 20 September 1999 and registered on 19 September 2000 with an expected expiry date of 20 September 2019 for the following goods:

Class 18 - Handbags, purses, briefcases, wallets, rucksacks, travelling bags, trunks, leather and imitations of leather, skins and hides, umbrellas, parasols, walking sticks, whips, harness and saddlery;

Class 25 - Sweaters, jerseys, waistcoats, jackets, skirts, trousers, shirts, blouses, housecoats, smoking jackets, underwear, dressing gowns, swimsuits, waterproof clothing, dresses, stockings, socks, collar protectors, ties, headgear and gloves (clothing);

  • Spanish national mark No 1 329 084

filed on 09 May 1989, registered on 20 May 1991 and last renewed on 31 March 2011 for the following goods:

Class 25 - Ready-to-wear clothing for women, men and children, stockings, socks, headgear, ties and shoes;

  • European Union trade mark No 3 867 876

filed on 2 June 2004 and registered on 23 July 2007 with an expected expiry date of 2 June 2024 for the following goods:

Class 25 - Sweaters, jerseys, waistcoats, jackets, skirts, trousers, shirts, blouses, dressing gowns, smoking jackets, underwear, dressing gowns, swimsuits, waterproof clothing, dresses, stockings, socks, scarves, neckties, headgear and gloves (clothing);

  • European Union trade mark No 6 959 365

filed on 3 June 2008 and registered on 26 November 2008 with an expected expiry date of 3 June 2018 for the following goods:

Class 14 - Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments;

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.

  1. On 10 November 2014, the Office sent a communication to the parties setting the date for the commencement of the adversarial part of the opposition proceedings which was to commence on 16 January 2015. The applicant’s time limit to submit its observations in reply was set to expire on 15 May 2015.

  2. The applicant did not submit any observations in reply to the opposition.

  3. By decision of 8 June 2015 (‘the contested decision’), the Opposition Division upheld the as amended, rejected the contested mark in its entirety and ordered the applicant to bear the costs. It gave, in particular, the following grounds for its decision:

  • For reasons of procedural economy, the opposition is first examined in relation to earlier Spanish trade mark No 1 329 084 and European Union trade mark No 6 959 365;

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

(1) Spanish trade mark No 1 329 084

Class 25 - Ready-to-wear clothing for women, men and children, stockings, socks, headgear, ties and shoes.

(2) Community trade mark No 6 959 365

Class 14 - Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes. jewellery, precious stones. horological and chronometric instruments;

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.

  • The contested goods are the following:

Class 14 - Jewellery, precious stones. horological and chronometric instruments. key rings [trinkets or fobs]. bag charms. cellular phone accessory charms;

Class 18 - Leather and imitation leather. animal skins, hides. trunks and travelling bags. umbrellas, big umbrellas and walking sticks. whips, harness and saddlery. pouches for holding makeup. toiletry bags. satchels. rucksacks. coin purses. bags for laptops. and bags of all kinds made of leather and imitations of leather;

Class 25 - Clothing, footwear, headgear. gloves. shawls.

  • The contested ‘jewellery, precious stones. horological and chronometric instruments’ in Class 14 are identically contained in both lists of goods. The contested ‘key rings [trinkets or fobs]. bag charms. cellular phone accessory charms’ overlap with the opponent’s ‘goods in precious metals or coated therewith, not included in other classes’, because the former can be items in precious metals or coated therewith. Therefore, they are considered identical;

  • The contested ‘leather and imitation leather. animal skins, hides. trunks and travelling bags. umbrellas, walking sticks. whips, harness and saddlery’ are identically contained in both lists of goods in in Class 18. The contested ‘big umbrellas’ are included in the broad category of the opponent’s ‘umbrellas’. Big umbrellas could also be considered as parasols protected by earlier Community trade mark No 6 959 365. Therefore, they are considered identical. The contested ‘pouches for holding makeup. toiletry bags. satchels. rucksacks. coin purses. bags for laptops. and bags of all kinds made of leather and imitations of leather’ are identical to the opponent’s ‘goods made of these materials [leather and imitations of leather] and not included in other classes’, either because the contested goods are included in or overlap with the opponent’s goods;

  • The contested ‘clothing’ in Class 25 includes, as a broader category, the opponent’s ‘ready-to-wear clothing for women, men and children’. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods. The contested ‘footwear’ includes, as a broader category, the opponent’s ‘shoes’. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods. The item ‘headgear’ is identically contained in both lists. The contested ‘gloves and shawls’ are included in the broad category of the opponent’s ‘ready-to-wear clothing for women, men and children’. Therefore, they are considered identical;

  • The relevant territories are Spain as regards Spanish trade mark No 1 329 084 and the European Union as regards European Union trade mark No 6 959 365;

  • Visually, all the signs under comparison coincide in the letters ‘NL’. The earlier Spanish mark and the contested sign further coincide from the visual point of view because those letters are surrounded by a circle in both signs and to that extent these two signs are considered similar to a high degree. The earlier Spanish mark and the contested sign differ mainly because the letters in the contested sign are attached to the circle, the letters ‘NL’ of the earlier Spanish mark are not placed at the same height in the circle, they are slightly more separated and there is an additional circle in the earlier Spanish mark. The differences between the earlier EUTM and the contested sign are more important as the letters ‘NL’ in the earlier EUTM are written in grey, are more separated, are repeated at the top of the sign with a double mirror effect and inversion and are not inserted in a circle. However, the typeface of the letters still remains similar. Therefore, the earlier EUTM and the contested sign are visually similar to an average degree;

  • Aurally, the pronunciation of the signs coincides in the sound of the letters /N-L/ present identically in the signs. The signs are aurally identical. It must be pointed out that the repetition of the letters ‘NL’ at the top of the earlier EUTM with a double mirror effect and inversion will be perceived as simple graphical effects without any influence on the pronunciation of the sign;

  • Conceptually, neither of the signs has a meaning for the public 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;

  • Taking into account the abovementioned visual similarities and aural identities, it is considered that the earlier Spanish mark is similar to a high degree to the contested sign and the earlier EUTM similar to an average degree;

  • The earlier EUTM has no element that could be clearly considered more distinctive than other elements;

  • As regards the earlier Spanish mark and the contested sign, it should be noted that they are composed of a distinctive verbal element and a less distinctive figurative element, namely the circles surrounding the letters ‘NL’, which are purely decorative in nature. It is for this reason that the verbal element ‘NL’ is considered more distinctive than the figurative elements. Consequently, the additional figurative elements have only a limited impact when assessing the likelihood of confusion between the marks;

  • The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements;

  • The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation;

  • Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal;

  • In the present case, the goods found to be identical are directed at the public at large. The level of attention is considered average;

  • The goods are identical. The earlier Spanish mark and the contested sign are visually similar to a high degree. The earlier EUTM and the contested sign are visually similar to a normal degree. The earlier marks and the contested sign are aurally identical;

  • For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question;

  • Therefore, the Opposition Division considers that the public could not be aware of the slight differences between the earlier Spanish mark and the contested sign and, for this reason, there exists a risk of confusion on the part of the public in the relevant territory;

  • As regards the earlier EUTM, one of the major visual differences with the contested sign, is the circle depicted in the latter. However, this element is banal in the sense that it is frequently used in figurative trade marks and, furthermore, has the effect of drawing the attention to the elements placed inside, in this case the letters ‘NL’. The other major difference between the earlier EUTM and the contested sign is the graphic result obtained from the effect of mirror duplicating and inverting the letters ‘NL’. In this regard, the Court of Justice confirmed that when signs consist of both verbal and figurative components, in principle, the verbal component of the signs usually has a stronger impact on the consumer than the figurative component, 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;

  • It must also be pointed out that likelihood of confusion includes the likelihood of association, in the sense that the public may believe that goods bearing the marks come from the same undertaking or from economically related ones. In the present case, the relevant public may think that the earlier EUTM and the contested sign are two different graphical versions of the distinctive verbal element ‘NL’, creating an impression that the signs and the relevant goods originate from the same undertaking or economically linked undertakings;

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

  • Consequently, the opposition is well founded on the basis of earlier Spanish trade mark No 1 329 084 and Community trade mark No 6 959 365. It follows that the contested trade mark must be rejected for all the contested goods;

  • As earlier Spanish trade mark No 1 329 084 and Community trade mark No 6 959 365 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent.

  1. On 28 July 2015, the applicant filed an appeal against the contested decision. The statement of grounds of the appeal was received on 07 October 2015.

  2. The opponent submitted its observations in reply on 10 December 2015.

Submissions and arguments of the parties

  1. In its statement of grounds of appeal, the applicant requests that:

  1. the opponent provide evidence of use in relation to the earlier European Union trade mark registrations No 6 959 365, No 3 867 876 and No 13 417;

  2. the Board declare the European Union trade mark registrations 6 959 365, 3 867 876 and 13 417 revoked because they have not been put to genuine use;

  3. the Board annul the contested decision, reject the opposition and order the opponent to bear the costs.

  1. Its arguments may be summarised as follows:

  • There is no likelihood of confusion with regard to the earlier Spanish mark. The goods are similar to a high degree. It is, however, disputed that ‘gloves’ and ‘shawls’ are included in the category of ‘ready-to-wear clothing for women, men and children’;

  • There is no similarity between the contested mark and the earlier Spanish mark. The contested mark consists of the letters ‘NL’ inside the letter ‘O’, while the Spanish mark has two circles surrounding the letters ‘NL’ which are purely decorative in nature. The letter ‘O’ is an essential element of the contested mark and is not purely decorative in nature. Aurally, the signs differ: ‘NL’ vs. ‘ONL’. The signs also differ conceptually. The contested mark has the meaning ‘Orange New Life’. It will be used separately and together with the word mark ‘ORANGE NEW LIFE’. The contested mark will be perceived by consumers as the abbreviation of ‘Orange New Life’;

  • The earlier European Union trade mark No 6 959 365 has to be declared revoked because it has not been put to genuine use in the European Union. The applicant had invited the opponent to provide evidence of use but the opponent refused to provide such evidence;

  • Furthermore, there is no likelihood of confusion with regard to the earlier European Union trade mark No 6 959 365. The goods in Classes 14 and 18 are similar to a high degree. This European Union trade mark is not registered for Class 25 goods;

  • The contested mark and the earlier European Union trade mark No 6 959 365 are not similar to a high degree. The contested mark consists of the letters ‘O’, ‘N’ and ‘L’ which is an abbreviation of ‘Orange New Life’ and will be perceived by consumers as such. The circle of the contested mark is the letter ‘O’. The earlier European Union trade mark consists only of two letters and their mirror image. These letters are not surrounded by a circle. Aurally, the signs differ: ‘NL’ vs. ‘ONL’. The contested mark will be perceived by consumers as the abbreviation of ‘Orange New Life’;

  • Finally, it is disputed that there is a likelihood of confusion between the contested mark and the earlier European Union trade marks No 3 867 876 and No 13 417. The opponent did not provide evidence of genuine use of these earlier European Union trade marks. Therefore, they have to be declared revoked.

  1. The opponent requests that the Board dismiss the applicant’s appeal, essentially reiterating the reasoning of the contested decision. Its additional arguments may be summarised as follows:

  • The likelihood of confusion is real and high;

  • The applicant did not request proof of use during the opposition procedure. Therefore, no evidence of use was filed;

  • The contested decision of the Opposition Division is fair and coherent and should be maintained.

Reasons

  1. The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR. It is, therefore, admissible.

Applicant’s requests for proof of genuine use and revocation

  1. In the course of the opposition procedure the applicant did not request that the opponent furnish proof of use of the earlier marks. In fact, the applicant did not submit any observations in reply to the opposition. Therefore, in accordance with Article 42(2) EUTMR, the opponent was under no obligation to submit such evidence.

  2. Before the Boards of Appeal, the applicant requests for the first time that the applicant provide evidence of use in relation to the earlier European Union trade mark registrations No 6 959 365, No 3 867 876 and No 13 417. Rule 22(1) EUTMIR provides that a request for proof of use is admissible only if the applicant submits such a request within the period specified by the Office pursuant to Rule 20(2) CTMIR. This provision refers to the first time limit for the applicant to reply to the opposition which, in the present case, expired on 15 May 2015. The applicant’s request for proof of use of 7 October 2015 is, therefore, inadmissible.

  3. Finally, the applicant’s requests that the Board revoke the earlier European Union trade mark registrations No 6 959 365, No 3 867 876 and No 13 417. In this regard, it suffices to note that an application for revocation needs to comply with the requirements of Article 56 EUTMR. The applicant’s request does not fulfil these requirements, in particular with regard to the payment of the corresponding fee.

  4. In light of the above, all the applicant’s claims concerning the genuine use of the earlier marks must be rejected.

Article 8(1)(b) EUTMR

  1. Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

  2. For the purposes of applying Article 8(1)(b) EUTMR, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (22/01/2009, T‑316/07, easyHotel, EU:T:2009:14, § 42).

Spanish national mark No 1 329 084

  1. The Board will first examine the earlier Spanish national mark No 1 329 084.

Relevant public

  1. The earlier mark is protected in Spain which is, therefore, the relevant territory for analysing the likelihood of confusion.

  2. The earlier mark is registered for ‘ready-to-wear clothing for women, men and children, stockings, socks, headgear, ties and shoes’ in Class 25. These goods are directed at the public at large. For the purpose of the global assessment, the average consumer of the category of goods is deemed to be reasonably well informed and reasonably observant and circumspect (16/07/1998, C-210/96, Gut Springenheide, EU:C:1998:369, § 31; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Comparison of the goods

  1. The contested mark seeks protection in Class 25 in respect of ‘clothing, footwear, headgear; gloves; shawls’. Both lists of goods contain the items ‘clothing’ and ‘headgear’. The contested ‘footwear’ is identical to the opponent’s ‘shoes’. The contested ‘gloves’ and ‘shawls’ are typical clothing items and fall under the opponent’s ‘clothing for women, men and children’. Therefore, the goods in comparison in Class 25 are identical.

  2. The contested mark seeks protection in Class 14 in respect of the following goods: ‘jewellery, precious stones; horological and chronometric instruments; key rings [trinkets or fobs]; bag charms; cellular phone accessory charms’. These goods are different in nature and intended purpose. While it may be important for consumers to combine e.g. ‘jewellery’ with certain clothing items, this connection is insufficient for a finding of complementarity between these goods. The goods are also not in competition with each other. Consequently, the contested goods in Class 14 and the opponent’s goods in Class 25 are dissimilar.

  3. The contested mark also seeks protection in respect of ‘leather and imitation leather; animal skins, hides; trunks and travelling bags; umbrellas, big umbrellas and walking sticks; whips, harness and saddlery; pouches for holding makeup; toiletry bags; satchels; rucksacks; coin purses; bags for laptops and bags of all kinds made of leather and imitations of leather’ in Class 18.

  4. It is considered that the contested ‘trunks and travelling bags, pouches for holding makeup; toiletry bags; satchels; rucksacks; coin purses; bags for laptops and bags of all kinds made of leather and imitations of leather’ in Class 18 and the opponent’s ‘shoes’ in Class 25 have similarities in their nature. In particular, they can be made of the same materials. In addition, they are often sold together in the same stores. Furthermore, it may be important for consumers to combine, for example, a particular bag with a certain pair of shoes. However, the contested goods in Class 18 differ in their purpose from the opponent’s goods in Class 25. For these reasons, there is only a remote degree of similarity between the contested ‘trunks and travelling bags, pouches for holding makeup; toiletry bags; satchels; rucksacks; coin purses; bags for laptops and bags of all kinds made of leather and imitations of leather’ in Class 18 and the opponent’s ‘shoes’ in Class 25.

  5. This finding of a remote similarity does not extend to the remaining contested goods in Class 18, i.e. ‘leather and imitation leather; animal skins, hides; umbrellas, big umbrellas and walking sticks; whips, harness and saddlery’. The contested ‘leather and imitation leather; animal skins, hides’ are semi-processed goods while the opponent’s goods in Class 25 are finished products. The remaining contested goods in Class 18 differ from the opponent’s goods in Class 25 in their nature, intended purpose and method of use. They are not complementary and are not in competition with each other. Therefore, they are dissimilar.

Comparison of the signs

  1. The earlier mark

has to be compared with the contested mark

  1. Both signs are figurative marks in black-and-white. The earlier mark is made up of the capital letters ‘N’ and ‘L’ inside two concentric black circles. The contested mark is composed of the stylized letters ‘N’ and ‘L’ inside a black circle.

  2. The signs coincide visually in the presence of the capital letters ‘N’ and ‘L’ inside a black circle. Their main differences are (1) the fact that the contested mark features one circle instead of two concentric circles as in the case of the earlier mark, and (2) the stylization of the letters ‘N’ and ‘L’. Despite the differences, the similarities between the marks are such that the signs must be considered visually highly similar.

  3. Contrary to the applicant’s view, the signs will be read by the relevant public as ‘NL’. There is no reason to assume that the average consumer would consider that the contested mark contains the letter ‘O’. The applicant’s argument that the contested mark will be used together with the word mark ‘ORANGE NEW LIFE’ and that, therefore, it will be perceived by consumers as the abbreviation of ‘Orange New Life’ must be rejected. The future use of the contested mark and the meaning it may acquire are immaterial for the present comparison of the signs at issue. The contested mark’s black circle will not be perceived as the letter ‘O’ but as a decorative element. The relevant Spanish speaker will pronounce both the earlier mark and the contested mark as [ene ele]. The identical letters ‘NL’ produce the same phonetic impression in both marks. Therefore, the signs in comparison are phonetically identical.

  4. The relevant public is most likely to perceive the marks in comparison merely as the two-letter combination ‘NL’. There is no indication to suggest that consumers would attach the same concept to them. Therefore, the marks are not conceptually similar.

Likelihood of confusion

  1. 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 within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16 to 18; and 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

  2. The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end-user by enabling him/her, without any likelihood of confusion, to distinguish a product or service from those of another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also seventh recital of the EUTMR).

  3. The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; and 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

  4. Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

  5. The earlier mark does not have any meaning at all in relation to ‘ready-to-wear clothing for women, men and children, stockings, socks, headgear, ties and shoes’ in Class 25. It consequently possesses an average degree of distinctiveness with regard to the opponent’s goods.

  6. The signs are visually highly similar and phonetically identical.

  7. In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

  8. In comparison to the opponent’s goods in Class 25, the contested:

Class 25 - Clothing, footwear, headgear; gloves; shawls

are identical,

Class 18 - Trunks and travelling bags; pouches for holding makeup; toiletry bags; satchels; rucksacks; coin purses; bags for laptops and bags of all kinds made of leather and imitations of leather

are remotely similar and

Class 14 - Jewellery, precious stones; horological and chronometric instruments; key rings [trinkets or fobs]; bag charms; cellular phone accessory charms;

Class 18 - Leather and imitation leather; animal skins, hides; umbrellas, big umbrellas and walking sticks; whips, harness and saddlery

are dissimilar.

  1. With regard to the dissimilar contested goods, the opposition under Article 8(1)(b) EUTMR fails because one of the requirements, namely the identity or similarity of the goods in comparison, is not fulfilled.

  2. With regard to the identical and remotely similar contested goods, the differences between the signs are insufficient to avoid a likelihood of confusion, even for the remotely similar goods. Consequently, there is a likelihood of confusion between the earlier Spanish national mark No 1 329 084 and the contested mark for these goods on the part of the public in Spain.

European Union trade mark No 6 959 365

  1. The Board will continue to examine the earlier European Union trade mark No 6 959 365

Relevant public

  1. The earlier mark is protected in the European Union which is, therefore, the relevant territory for analysing the likelihood of confusion.

  2. The earlier mark is registered for ‘precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’ in Class 14 and ‘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’ in Class 18. These goods are directed at the public at large as well as a professional public. For the purpose of the global assessment, the average consumer of the category of goods is deemed to be reasonably well informed and reasonably observant and circumspect.

Comparison of the goods

  1. The contested decision concluded that the confronted goods in Classes 14 and 18 were identical. The Board does not have any reason to diverge from the contested decision’s findings. They are, therefore, confirmed.

  2. The contested ‘footwear’ in Class 25 is considered remotely similar to the opponent’s ‘goods made of these materials [leather and imitations of leather] and not included in other classes’ in Class 18 for the same reasons as given above. The goods in comparison have similarities in their nature, in particular because they can be made of the same materials. In addition, they are often sold together in the same stores. Furthermore, it may be important for consumers to combine, for example, a bag with a particular pair of shoes. However, the opponent’s goods in Class 18 and the contested ‘footwear’ in Class 25 have significant differences in their purpose. For these reasons, the degree of similarity between these goods is only remote.

  3. This finding of a remote similarity does not extend to the remaining contested goods in Class 25, ‘clothing, headgear; gloves; shawls’. Those goods differ from the opponent’s goods in Classes 14 and 18 in their nature, intended purpose and method of use. They are not complementary and not in competition with each other. Therefore, the contested ‘clothing, headgear; gloves; shawls’ in Class 25 and the opponent’s goods in Classes 14 and 18 are dissimilar.

Comparison of the signs

  1. The earlier mark

has to be compared with the contested mark

  1. Both signs are figurative marks. The earlier mark is made up of two identical images of the letter combination ‘NL’ in a grey standard font. The upper image is the result of a 180 degree rotation of the adjacent lower image such that it appears upside down. The contested mark is composed of the stylized letters ‘N’ and ‘L’ inside a black circle.

  2. The signs coincide visually in the presence of the capital letters ‘N’ and ‘L’. They differ in their remaining elements. In particular, the contested mark features a circle, while the earlier mark does not. The earlier mark contains two images of the letter combination ‘NL’ while the contested mark only features one. The earlier mark appears in grey and white, while the contested mark is represented in black and white. Taking all the above into account, the signs are visually similar.

  3. Both signs will be read by a significant part of the relevant public in the European Union as ‘NL’. Contrary to the applicant’s view, there is no reason to assume that the average consumer would believe that the contested mark contains the letter ‘O’. The black circle will be perceived as a decorative element. Furthermore, consumers are unlikely to refer to the earlier mark by pronouncing the letter combination ‘NL’ more than once, in particular, because the two images of the letter combination ‘NL’ are identical and the upper image appears upside down. The signs’ identical letters ‘NL’ produce the same phonetic impression in both marks, irrespective of the speaker’s native language. Therefore, the signs in comparison are phonetically identical.

  4. The relevant public is most likely to perceive the marks in comparison merely as the two-letter combination ‘NL’. There is no indication to suggest that consumers would attach the same concept to them. Therefore, the marks are not conceptually similar.

Likelihood of confusion

  1. The earlier mark does not have any meaning at all in relation to ‘precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’ in Class 14 and ‘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’ in Class 18. It consequently possesses an average degree of distinctiveness with regard to the opponent’s goods.

  2. The signs are visually similar and phonetically identical.

  3. In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

  4. In comparison to the opponent’s goods in Classes 14 and 18, the contested:

Class 14 - Jewellery, precious stones; horological and chronometric instruments; key rings [trinkets or fobs]; bag charms; cellular phone accessory charms;

Class 18 - Leather and imitation leather; animal skins, hides; trunks and travelling bags; umbrellas, big umbrellas and walking sticks; whips, harness and saddlery; pouches for holding makeup; toiletry bags; satchels; rucksacks; coin purses; bags for laptops and bags of all kinds made of leather and imitations of leather

are identical,

Class 25 - Footwear

are remotely similar and

Class 25 - Clothing, headgear; gloves; shawls

are dissimilar.

  1. With regard to the dissimilar contested goods, the opposition under Article 8(1)(b) EUTMR fails because one of its requirements, namely the identity or similarity of the goods in comparison, is not fulfilled.

  2. With regard to the identical and remotely similar goods, the differences between the signs are insufficient to avoid a likelihood of confusion, even for the remotely similar goods. Consequently, there is a likelihood of confusion between the earlier European Union trade mark No 6 959 365 and the contested mark for these goods on the part of the public in the European Union.

Conclusion

  1. The opposition under Article 8(1)(b) EUTMR on the basis of Spanish national mark No 1 329 084 and European Union trade mark No 6 959 365 is fully successful.

  2. On account of the above, the appeal is dismissed.



Costs

  1. Since the applicant is the losing party within the meaning of Article 85(1) EUTMR, it must be ordered to bear the costs of the appeal proceedings. Consequently, the applicant must be ordered to reimburse the opponent with the costs of professional representation in the appeal proceedings at the level laid down in Rule 94(7)(d) CTMIR that is EUR 550. The apportionment of costs in the contested decision remains unchanged.

Order

On those grounds,

THE BOARD

hereby:

  1. Dismisses the appeal;

  2. Orders the applicant to bear the opponent’s representation costs in the appeal proceedings fixed at EUR 550.













Signed


Th. M. Margellos





Signed


M. Bra




Signed


Ph. von Kapff





Registrar:


Signed


H.Dijkema





07/07/2016, R 1518/2015-1, NL (fig.) / NL (fig.) et al.

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