OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 514 837
GFM GmbH Trademarks, An der Ach 3, 82402 Seeshaupt, Germany (opponent), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative).
a g a i n s t
A&M Partecipazioni S.R.L., Via Bassanese 61, Montebelluna, Italy (applicant), represented by DP Partners S.R.L.,Via Dino Buzzati, 8/5 31044 Montebelluna (TV), Italy (professional representative).
On 10/03/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods of Community
trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 goods on which the opposition is based are the following:
Class 18: Goods made of leather and imitations of leather (in as far as contained in class 18); bags, small leather articles, in particular purses, wallets, key cases; hides; trunks and travelling bags, sacks, bags, rucksacks, carrying cases, school bags and book bags (all aforesaid goods made of leather, imitation leather, textiles and synthetic materials); cases, namely travelling sets (leatherware); umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, in particular sports and leisure wear, knitwear, headgear; clothing accessories, namely headkerchiefs, neckerchiefs (scarves), shawls, hoods, sweat bands, gloves, panty hoses, socks and belts.
The contested goods are the following:
Class 18: Walking sticks; Umbrellas and parasols; Luggage, bags, wallets and other carriers; Imitation leather; Leather for shoes; Leather and imitation leather.
Class 25: Headgear; Clothing; Snow suits.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).
However, the term ‘namely’ also used in the opponent’s list of goods shows the relationship of individual goods and services with a broader category. It is exclusive and restricts the scope of protection only to the specifically listed goods.
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 18
Walking sticks; Umbrellas and parasols; bags, wallets are identically contained in both lists of goods and services (including synonyms). These goods are identical.
The contested Luggage and other carriers cannot be clearly separated from the opponent’s trunks and travelling bags. These sets of goods overlap and are, therefore, considered identical.
The contested Imitation leather; Leather for shoes; Leather and imitation leather are raw materials that can be used to manufacture the opponent’s goods in Classes 18 and 25. The opponent’s goods are not raw materials but finished products (like bags, trunks, clothing) that target sections of the general public. It should be noted that the mere fact that one good is used for the manufacture of another is not sufficient in itself to conclude that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned contested goods consist of components/raw materials that are intended for use in industry rather than for direct purchase by the final consumer. Therefore, the goods under comparison have different natures, purposes and trade channels. In addition, they target different consumers, have different origins and are not in competition Therefore, they are considered dissimilar.
Contested goods in Class 25
The contested Headgear; Clothing are also covered by the opponent’s earlier right. They are therefore identical.
The contested Snow suits are included in the broad category of the opponent’s clothing. Therefore, they are identical.
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 are directed at the public at large. The degree of attention of the relevant public is average.
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a figurative mark that consists of the image of a left shoe sole.
The contested sign is a figurative mark that consists of the image of two shoe soles characterised by a black imprint surrounded by inner parts in yellow.
The marks have no elements that could be considered more dominant (visually eye-catching) than other elements.
The figurative elements of both signs will be associated with soles of shoes. Bearing in mind that the relevant goods are not shoe related, these elements are distinctive for the goods in conflict.
The marks have no elements that could be considered clearly more distinctive than other elements.
Visually, both signs comprise the sole of a shoe. However, the ways they are represented differ significantly. Indeed, the opponent’s figure is composed of just one shoe sole, whereas the contested sign represents two soles in black and yellow. Because of these visual differences, the signs are globally visually similar to a low degree.
Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.
Conceptually, both signs convey the notion of shoes sole(s). Therefore they are conceptually similar.
Taking into account the abovementioned limited visual and conceptual coincidences, the signs under comparison are similar to a limited extent.
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.
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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 ).
The Court of Justice has established the principle that it is not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.
In the present case, the Opposition Division has established in part d) of this decision that the earlier mark enjoys a normal degree of distinctiveness.
As seen previously, the marks are visually and conceptually similar to the extent they include the figure of shoe sole(s). However, they show significant visual differences in the way they are represented.
The opponent’s sign is formed by only one sole, while the applicant’s mark is composed of two soles with a combination of colours.
Furthermore, the phonetic comparison cannot be made because the signs in question are purely figurative.
Generally, in shops where clothes and complementary accessories are sold customers can themselves either choose the articles they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the visual differences between the signs caused by the different representations of one vs two shoe soles and the colours of the contested sign are particularly relevant when assessing the likelihood of confusion between them.
In the present case, the Opposition Division is of the opinion that, because of the evident visual differences between the two devices, consumers will have no difficulty in distinguishing between the marks regardless of the identity of some of the goods.
The concrete visual dissimilarities between them override the mere visual and conceptual similarity which derives solely from the generic notion and vision of the sole of a shoe.
Considering all the above, the tenuous similarities between signs are not enough to counteract the significant visual dissimilarities to lead to a likelihood of confusion.
Therefore, the opposition must be rejected.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.