OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 511 742
Frank Usher Ltd, Unit 1, Vantage Point, 5 Wingfoot Close, Birmingham B24 9JH, United Kingdom (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom (professional representative)
a g a i n s t
Ecode East Code Designs LLC, State PF Delaware 251201 Orange Street, Wilmington, Delaware 19801, United States of America (applicant), represented by Mendes Ferreira & Associados, Avenida da Boavista 3477, 3521, 3º floor S.308 - Edificio Avis, 4100 - 139 Porto, Portugal (professional representative).
On 27/01/2016, the Opposition Division takes the following
1. Opposition No 2 511 742 is partially upheld, namely for the following contested goods:
Class 25: Clothing; footwear; headgear; ankle boots; army boots; boots; booties; beach shoes; boots for motorcycling; boxing shoes; casual footwear; canvas shoes; children’s footwear; climbing boots [mountaineering boots]; dance shoes; cycling shoes; deck shoes; fishing boots; high-heeled shoes; hunting boots; infants’ footwear; inner socks for footwear; running shoes; sandals
2. Community trade mark application No 13 320 502 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods of Community trade mark application No 13 320 502. The opposition is based on, inter alia, Community trade mark registration No 12 438 371. The opponent invoked Article 8(1)(b) CTMR.
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 12 438 371.
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear and headgear.
The contested goods are the following:
Class 25: Clothing; footwear; headgear; ankle boots; army boots; boots; booties; beach shoes; boots for motorcycling; boxing shoes; casual footwear; canvas shoes; children’s footwear; climbing boots [mountaineering boots]; dance shoes; cycling shoes; deck shoes; fishing boots; fittings of metal for footwear; high-heeled shoes; hunting boots; infants’ footwear; inner socks for footwear; running shoes; sandals.
Contested goods in Class 25
Clothing, footwear and headgear are identically contained in both lists of goods.
The contested ankle boots; army boots; boots; booties; beach shoes; boots for motorcycling; boxing shoes; casual footwear; canvas shoes; children’s footwear; climbing boots [mountaineering boots]; dance shoes; cycling shoes; deck shoes; fishing boots; high-heeled shoes; hunting boots; infants’ footwear; inner socks for footwear; running shoes; sandals, are included in the broad category of the opponent’s footwear. Therefore, they are identical.
The contested fittings of metal for shoes and boots are parts for footwear. The mere fact that they are used for manufacturing final products that belong to Class 25 is not sufficient to render them similar to the opponent’s goods in this class. They are usually aimed at undertakings that manufacture the end products, and not at the general public, and they do not normally have the same distribution channels as the opponent’s goods in Class 25. Therefore, the goods in question are dissimilar.
Earlier trade mark
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 English-speaking part of the relevant public.
Visually, the signs are similar to the extent that they coincide in the letters ‘D*USK’. However, they differ in the punctuation mark, a full point, after the letter ‘D’, and in the word ‘benchcrafted’ – in lower case italics, below the verbal element ‘D.USK’ – in the contested sign. Furthermore, they differ in the stylised typeface – the first three letters, ‘D*US’ being in lower case and the last letter, ‘K’, in upper case – in 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 sound of the letters ‘D*USK’ present identically in both signs, and to that extent the signs are aurally similar. The signs differ in the pronunciation of the word ‘benchcrafted’ of the contested mark, which has no counterpart in the earlier sign.
Conceptually, the earlier sign will be perceived as the word ‘DUSK’, referring to the darker stage of the twilight or semidarkness. The word ‘benchcrafted’ may be associated with something that has been crafted on a workbench.
A part of the relevant public will associate the contested mark with the meaning of ‘DUSK’, as given above. Consequently, for this part of the public the marks are conceptually similar.
Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.
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.
Neither the earlier mark nor the contested sign has any element that could be clearly considered more distinctive than other elements.
The earlier mark has no element which could be considered more dominant (visually eye‑catching) than other elements.
The element ‘D.USK’ in the contested sign is the dominant element as it is the most eye‑catching.
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.
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 is considered average.
Global assessment, other arguments and conclusion
According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).
The goods are partly identical and partly dissimilar. The earlier mark has a normal degree of distinctiveness and the degree of attention of the public is average.
The signs are visually, aurally and conceptually similar to the extent that they contain the letters ‘D*USK’, which form the only element of the earlier mark and the dominant element in the contested mark.
The differing punctuation mark in the contested sign, the full point, is placed in a non-prominent, secondary position and will not catch the consumer’s attention, the same way as the typeface and written form, which will be mostly ignored.
In addition, 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).
Based on the principle of imperfect recollection, it is considered that the similarities between the signs are sufficient to cause at least part of the public to believe that the identical goods come from the same undertaking or economically linked undertakings. Considering all of the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 12 438 371. It follows that the contested trade mark must be rejected for all the goods found to be identical.
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) CTMR, the opposition based on this article and directed at these goods cannot be successful.
As the earlier right Community trade mark registration No 12 438 371 leads to the success of the opposition and to the rejection of the contested trade mark for some the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
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
Victoria DAFAUCE MENÉNDEZ
María Belén IBARRA
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.