OPPOSITION No B 2 464 579

S247 Brands Limited, Units 3 and 4, Lower Park Farm, Storrage Lane, Alvechurch, Worcestershire B48 7ER, United Kingdom (opponent), represented by Bison River Limited, Unit 8 Valley Court Offices Lower Road, Croydon Near Royston, Herts SG8 0HF, United Kingdom (professional representative)

a g a i n s t

Dart Industries Inc., 14901 S. Orange Blossom Trail, Orlando, Florida 32837, United States of America (applicant), represented by Jonas Rechtsanwaltsgesellschaft Mbh, Hohenstaufenring 62, 50674 Köln, Germany (professional representative).

On 20/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 464 579 is partially upheld, namely for the following contested goods:

Class 18: Leather and imitation leather; leather cloth; leather for furniture; leather for shoes; boxes made of leather; luggage, bags, wallets and other carriers; baggage; Bags for campers; bags for climbers; beach bags; belt bags and hip bags; briefcases; canvas bags; card holders; carry-on bags; casual bags; clutch bags; coin purses; coin holders; cosmetic bags sold empty; cosmetic purses; credit card cases [wallets]; leather purses; leather credit card wallets; leather bags and wallets; kit bags; key cases made of leather; key bags; handbags made of imitations leather; handbags made of leather; hand bags; handbags, purses and wallets; gym bags; pouches; shoulder bags; travel luggage; tote bags; textile shopping bags; souvenir bags; trunks [luggage]; umbrellas and parasols; beach umbrellas [beach parasols]; parasols; umbrella covers; umbrellas; walking sticks.

Class 25: Clothing, footwear, headgear.

2. Community trade mark application No 13 201 512 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 13 201 512, namely against all of the goods in Classes 18 and 25 and some of the services in Class 35. The opposition is based on, inter alia, Community trade mark registration No 10 467 793. The opponent invoked Article 8(1)(b) CTMR.

PRELIMINARY REMARK

The opponent in the Notice of Opposition also indicated that the opposition was based on four non-registered marks or signs used in the course of trade under Article 8(4) CTMR. However, in the opponent’s letter dated 11/05/2015 it stated that it is relying only on its three Community trade marks identified in the Notice of Opposition, that it does not intend to file any further submissions and requests that a decision should be taken on the basis of these rights under Article 8(1)(b). The Opposition Division understands this as the opponent withdrawing the opposition as far as it was based on these four earlier non-registered marks or signs under Article 8(4) CTMR. It should also be mentioned that the opponent did not file any evidence in support of these earlier non-registered marks or signs before the expiry of the deadline to do so.

The applicant, in its submissions dated 14/08/2015, submitted arguments regarding these earlier non-registered marks or signs under Article 8(4) CTMR, and the opponent responded to these arguments in its response dated 02/11/2015. The Opposition Division will not examine these arguments and submissions because the opponent’s letter dated 11/05/2015 indicates that the earlier rights on which the opposition is based under Article 8(4) CTMR are no longer to be used. Additionally, and for completeness, even if those earlier rights were to be examined, they would necessarily fail as no evidence was filed in support of these earlier non-registered marks or signs before the expiry of the deadline to do so.

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 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 Community trade mark registration No 10 467 793.

1. The goods and services

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

Class 12: Golf trolleys; part and fittings for all the aforesaid goods.

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; articles of luggage; bags; sports bags; backpacks; satchels; haversacks; knapsacks; rucksacks; camping bags; bags for campers; holdalls; cases; trunks; key cases; shooting sticks; leather or leather board boxes; parts and fittings for all the aforesaid goods.

Class 25: Clothing, footwear, headgear; leisure clothing, footwear and headgear; golf clothing, footwear and headgear; sports clothing, footwear and headgear; waterproof clothing, footwear and headgear; thermal clothing, footwear and headgear; belts for wear; sweat bands; headbands.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; sports apparatus; fitness apparatus; apparatus for use in golf; golf clubs; golf putters; golf irons; golf club heads and shafts; golf club grips; golf club bags; golf bags; trolley bags for golf equipment; golf club head covers; golf balls; golf ball markers; golf ball retrievers; golf ball spotters; golf tees; golf tee bags; golf gloves and grips; golf mats; golf practice apparatus; golf swing alignment apparatus; golf training aids; sports bags and holdalls adapted to contain sports apparatus; bags adapted for and carrying sporting articles and implements; gloves for sporting purposes; protective padded articles for use in playing a specific sport including golf; leg guards; protectors for elbows and knees when participating in sport; shin, face and mouth guards for sporting purposes; parts and fittings for the aforesaid goods.

The contested goods and services are the following:

Class 18: Leather and imitation leather; leather cloth; leather for furniture; leather for shoes; boxes made of leather; luggage, bags, wallets and other carriers; baggage; Bags for campers; bags for climbers; beach bags; belt bags and hip bags; briefcases; canvas bags; card holders; carry-on bags; casual bags; clutch bags; coin purses; coin holders; cosmetic bags sold empty; cosmetic purses; credit card cases [wallets]; leather purses; leather credit card wallets; leather bags and wallets; kit bags; key cases made of leather; key bags; handbags made of imitations leather; handbags made of leather; hand bags; handbags, purses and wallets; gym bags; pouches; shoulder bags; travel luggage; tote bags; textile shopping bags; souvenir bags; trunks [luggage]; umbrellas and parasols; beach umbrellas [beach parasols]; parasols; umbrella covers; umbrellas; walking sticks.

Class 25: Clothing, footwear, headgear.

Class 35: Retail services through home party and on the Internet of products, namely games and playthings; retail services through home party and on the Internet of products, namely leather and imitations of leather, bags, trunks and travelling bags, umbrellas, parasols and walking sticks, shackles and whips, clothing, footwear, headgear; presentation and collection of goods (for others), for advertising and sales purposes, namely games and playthings; demonstration of goods for advertising and sales purposes, namely games and playthings; presentation and collection of goods (for others), for advertising and sales purposes, namely leather and imitations of leather, bags, trunks and travelling bags, umbrellas, parasols and walking sticks, shackles and whips, clothing, footwear, headgear.

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 ‘including’, 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’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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.

Contested goods in Class 18

Leather and imitation leather; luggage, bags; bags for campers; key bags; travel luggage; trunks [luggage]; umbrellas and parasols; parasols; umbrellas; walking sticks are identically contained in both lists of goods (including synonyms).

The contested leather cloth; leather for furniture; leather for shoes are included in the broad category of the opponent’s leather and imitations of leather. Therefore, they are considered identical.

The contested boxes made of leather; wallets; briefcases; card holders; coin purses; coin holders; credit card cases [wallets]; leather purses; leather credit card wallets; leather bags and wallets; handbags made of imitations leather; handbags made of leather; hand bags; handbags, purses and wallets are included in the broad category of the opponent’s goods made of these materials [leather and imitations of leather] and not included in other classes. Therefore, they are identical.

The contested other carriers; baggage; bags for climbers; beach bags; belt bags and hip bags; canvas bags; carry-on bags; casual bags; clutch bags; cosmetic bags sold empty; cosmetic purses; pouches; kit bags; shoulder bags; tote bags; textile shopping bags; souvenir bags are included in the broad categories of the opponent’s articles of luggage and bags. Therefore, they are identical.

The contested key cases made of leather are included in the broad category of the opponent’s key cases. Therefore, they are identical.

The contested gym bags are included in the broad category of the opponent’s sports bags. Therefore, they are identical.

The contested beach umbrellas [beach parasols] are included in the broad categories of the opponent’s umbrellas, parasols. Therefore, they are identical.

The contested umbrella covers are considered to be highly similar to the opponent’s umbrellas. These goods come from the same manufacturer, are complementary to one another, and will be sold side by side to the same customers.

Contested goods in Class 25

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

Contested goods in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as 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.

Therefore, the contested retail services through home party and on the Internet of products, namely games and playthings; retail services through home party and on the Internet of products, namely leather and imitations of leather, bags, trunks and travelling bags, umbrellas, parasols and walking sticks, shackles and whips, clothing, footwear, headgear; presentation and collection of goods (for others), for sales purposes, namely games and playthings; demonstration of goods for sales purposes, namely games and playthings; presentation and collection of goods (for others), for sales purposes, namely leather and imitations of leather, bags, trunks and travelling bags, umbrellas, parasols and walking sticks, shackles and whips, clothing, footwear, headgear are similar to a low degree to the opponent’s leather and imitations of leather, bags, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery in Class 18, clothing, footwear and headgear in Class 25 and games and playthings in Class 28.

However, the contested services of presentation and collection of goods (for others), for advertising purposes, namely games and playthings; demonstration of goods for advertising purposes, namely games and playthings; presentation and collection of goods (for others), for advertising purposes, namely leather and imitations of leather, bags, trunks and travelling bags, umbrellas, parasols and walking sticks, shackles and whips, clothing, footwear, headgear are dissimilar to the opponent’s earlier goods. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. This is not the purpose of the opponent’s goods, and advertisers do not usually manufacture the goods that they advertise, and vice versa. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non English and non French-speaking part of the relevant public.

Visually, both signs include representations of the verbal element ‘CONFIDENCE’. However, they are presented in quite different typefaces and both signs have other elements not present in the other sign, namely the curling figurative element ending in a black and white circle of the earlier right and a stylised figurative device including three human figures with upstretched arms and the additional, albeit much smaller, verbal elements, namely ‘CHAIN OF’, of the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the verbal element ‘CONFIDENCE’ present identically in both signs. It should be noted that this is the earlier mark’s only verbal element. The pronunciation differs in the sound of the verbal elements ‘CHAIN OF’ of the contested sign which have no counterpart in the earlier mark.

Conceptually, whilst the stylised figurative device of the contested sign will be seen as including three human figures with upstretched arms, the earlier right has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

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

The contested sign has two elements which because of their size and position are the dominate elements of the sign, namely the figurative device and the verbal element ‘CONFIDENCE’.

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

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 and services 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. 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 or similar to various degrees are directed at the public at large. The degree of attention is considered to be average.

6. Global assessment, other arguments and conclusion

The contested goods and services have been found to be partially identical, partially similar to various degrees and partially dissimilar. The earlier mark is of normal distinctiveness and the signs have been found to be visually and aurally similar.

The point of contact between the signs is clearly the presence in both of the verbal element ‘CONFIDENCE’. Given that the relevant public here is the non English and non French speaking public in the relevant territory, this word has no meaning and will be seen as a fanciful term. Likewise the verbal elements ‘CHAIN OF’ also have no meaning for the relevant public.

With respect to the figurative elements, when signs show both word and figurative components, the word component of the sign usually has a greater impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component. Therefore, the visual differences between the signs will not have a huge impact on the relevant public as they will more readily refer to the signs by its verbal component rather than attempt to describe the presence of the various figurative elements.

Clearly the relevant public will refer to the earlier mark by the fanciful verbal element ‘CONFIDENCE’, which is also the only verbal element of the earlier mark and the co-dominant element in the contested sign. As far as the contested sign concerned there is the same fanciful verbal element ‘CONFIDENCE’ but also additional verbal elements, namely ‘CHAIN OF’. However, whilst they are not negligible they are presented in a much smaller typeface and have been found to be not visually eye catching.

Furthermore, consumers only rarely have the opportunity to make a direct comparison between different marks, but must place their trust in the imperfect picture of them that they have kept in mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26).

In addition, having regard to the principle of interdependence according to which a higher degree of similarity between the goods and services counteracts a lower degree of similarity between the conflicting signs and vice versa, it is reasonable to find that this applies to the present case, where at least as far as all the contested goods are concerned they have been found to be identical or highly similar.

Taking into account all the relevant circumstances of the case, the Opposition Division finds that there is a likelihood of confusion for all the goods found identical or highly similar, and therefore the opposition is partially well founded on the basis of the opponent’s trade mark registration.

It follows that the contested trade mark must be rejected for all the goods found identical or highly similar.

As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The opposition is, however, not successful insofar as the services found similar only to a low degree are concerned. This follows from the principle of interdependence mentioned above. In the current case whilst the signs are similar, they are not so similar that consumers who have an average degree of attention, which is the case here, will also confuse goods and services found similar only to a low degree.

Furthermore, the rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• Community trade mark registration No 4 824 603 for the figurative mark ,

• Community trade mark registration No 8 969 115 for the figurative mark .

One of these marks is identical to the one which has already been compared. Furthermore, they cover a subset of the same goods as have already been compared (they cover goods in Class 28). As the remaining contested services have already been found dissimilar to these goods, the outcome cannot be different with respect to these earlier rights. Consequently, no likelihood of confusion exists with respect to those goods and services.

COSTS

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 opposition is successful only for part 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

Vita VORONECKAITĖ

Ric WASLEY

Wolfgang SCHRAMEK

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.