OPPOSITION No B 2 503 061

A & B Investment S.r.l., Viale Piave, 6, 20129, Milan, Italy (opponent), represented by Pipparelli & Partners, Via Quadronno, 6, 20122, Milano, Italy (professional representative)

a g a i n s t

Markus und Michael Schludecker GbR, Allmendstraße 1, 77966, Kappel-Grafenhausen, Germany (applicant), represented by Friedrich Graf Von Westphalen & Partner MBB, Kaiser-Joseph-Str. 284, 79098, Freiburg i. Br., Germany (professional representative).

On 28/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 503 061 is upheld for all the contested goods, namely

Class 25: Clothing, footwear, headgear; jerseys, t-shirts; infant clothing; baby clothing; layettes [clothing]; waist belts; scarves; caps [headwear]; caps; bibs, not of paper; socks; stockings.

2. European Union trade mark application No 13 628 003 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 628 003 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 8 597 346 for the word mark ‘TORTUGA ACADEMY EST. 1963’. 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: Clothing, dresses, skirts, trousers, shorts, jackets, greatcoats, raincoats, overcoats, coats, shirts, tee-shirts, jumpers, tops, pullovers, sweatshirts; underwear; swimming costumes; gymnastic and sports clothing; clothing accessories, including scarves, neckties, headscarves, belts, gloves, stockings; shoes, slippers, boots; gymnastic and sporting footwear; headgear.

The contested goods are the following:

Class 25: Clothing, footwear, headgear; jerseys, t-shirts; infant clothing; baby clothing; layettes [clothing]; waist belts; scarves; caps [headwear]; caps; bibs, not of paper; socks; stockings.

Clothing; headgear are identically contained in both lists of goods.

The contested jerseys, t-shirts; infant clothing; baby clothing; layettes [clothing]; waist belts; scarves; bibs, not of paper; socks; stockings are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested caps [headwear]; caps are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested footwear includes, as a broader category, the opponent’s shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large.

The degree of attention is average.

The signs

TORTUGA ACADEMY EST. 1963
Earlier trade mark	Contested sign

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 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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.

The element that the signs have in common, ‘Tortuga’, would be associated with the same meaning in certain territories, for example in those countries where Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is the word mark ‘TORTUGA ACADEMY EST. 1963’. The word ‘TORTUGA’, included in both signs, is a Spanish word meaning ‘turtle’, which is a well-known reptile.

In its observations, the applicant argues that the word ‘TORTUGA’ has a low degree of distinctiveness, as:

- it is ‘commonplace to use animal names as parts of trade marks’, given that many trade marks include the name of animals such as ‘PUMA’, ‘BUFFALO’, ‘MAMMUT’ and ‘PITBULL’ (without including the trade mark numbers or other information that makes it possible to identify these marks);

- there are already other ‘TORTUGA’ trade mark registrations for goods in Class 25 (i.e. European Union trade mark No 14 248 629 ‘TORTUGA MARINA’ and European Union trade mark No 5 420 121 ‘OSCAR TORTUGA’).

With reference to the applicant’s first argument, the Opposition Division notes that, even if the applicant had proved the existence of several trade marks including animal names, this would not have been an argument in favour of the weakness of the word ‘TORTUGA’, as, in any case, words such as PUMA’, ‘BUFFALO’, ‘MAMMUT’ and ‘PITBULL’ refer to different kinds of animals and, therefore, to different concepts.

With reference to the applicant’s second argument, the Opposition Division notes that the applicant mentioned only two trade marks containing the word ‘TORTUGA’ and, in any event, the existence of several trade mark registrations containing ‘TORTUGA’ is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of only register data, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘TORTUGA’.

It has to be concluded that the word ‘TORTUGA’ is distinctive, as the meaning that this word conveys is not descriptive or allusive with respect to the relevant goods.

The word ‘ACADEMY’ is an English word that has a close equivalent in Spanish (‘ACADEMIA’) and can refer to ‘an educational institution of professional, artistic, technical or practical nature’. Bearing in mind that the relevant goods are articles of clothing, footwear and headgear, the word ‘ACADEMY’ could be perceived by the relevant public as a reference to the place where these articles are designed and/or made. Therefore, it is considered weak in relation to the relevant goods. The verbal element ‘EST.’ of the earlier sign, if it precedes a date, as in the case at issue, refers to the abbreviation for the English word ‘established’ and is a typical indication of the year when something – a company, for instance – was established. In this case, as the English verb ‘established’ has a close equivalent in Spanish (‘establecido’), the elements ‘EST. 1963’ could be perceived by the relevant public as an indication of the year in which the academy was established. In the light of the above, these elements are considered weak in relation to the relevant goods. The whole expression ‘TORTUGA ACADEMY EST. 1963’ could be perceived as referring to ‘an academy called Tortuga established in 1963’. This expression as a whole is distinctive, despite the presence of the weak elements ‘ACADEMY EST. 1963’.

The contested sign is a figurative mark that contains the words ‘TORTUGA KINDERLAND Das Land in dem kein Regen fällt. Le pays où il ne pleut pas’, written in slightly stylised black characters within a beige and brown label shaped like an ancient paper scroll. The word ‘TORTUGA’ is distinctive for the reasons explained above. The word ‘KINDERLAND’ is composed of two English/German words ‘KINDER’ and ‘LAND’ and will not be understood by the Spanish public, as there are no equivalents or close equivalents in Spanish. Therefore, it is distinctive in relation to the relevant goods. The German/French expression ‘Das Land in dem kein Regen fällt. Le pays où il ne pleut pas’ would not be understood by the relevant public and is, therefore, distinctive. However, as this word element is much smaller than and in a secondary position within the contested sign in comparison with the other word elements (i.e. ‘TORTUGA KINDERLAND’), it will have less impact on consumers. The label of the contested sign and the stylisation of the word elements are less relevant on account of their merely decorative function.

Visually, the signs coincide in the distinctive word ‘TORTUGA’, placed at the beginning or top of both signs, which is considered the part where consumers generally tend to focus when encountering a trade mark. This is explained by the fact that the public reads from top to bottom and from left to right, which makes the element placed at the top and left of the sign (the initial part) the one that first catches the attention of the reader. The signs differ in the verbal elements of the earlier mark (i.e. ‘ACADEMY EST. 1963’) and in the verbal and figurative elements of the contested sign (i.e. ‘KINDERLAND’, ‘Das Land in dem kein Regen fällt. Le pays où il ne pleut pas’, the label and the stylisation of the word elements). As explained above, the additional verbal elements of the earlier mark ‘ACADEMY EST. 1963’ and the expression ‘Das Land in dem kein Regen fällt. Le pays où il ne pleut pas’ of the contested sign play a minor role in the evaluation of the visual similarity between the signs because they are weak or much smaller than the other elements. It is true that the differing word element of the earlier sign, ‘KINDERLAND’, is distinctive; however, as it is placed in second position under the word ‘TORTUGA’, it has less impact on consumers than the word element ‘TORTUGA’. The label and the typeface of the word elements of the contested sign are less relevant on account of their merely decorative functions.

Taking into account all the above and, in particular, that the coinciding word ‘TORTUGA’ constitutes the beginnings of both signs, the degree of visual similarity of the signs is considered average.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘TORTUGA’, present identically in both signs. The pronunciation differs in the sound of the verbal elements of the earlier mark (i.e. ‘ACADEMY EST. 1963’) and in the sound of the verbal elements of the contested sign (i.e. ‘KINDERLAND’ and ‘Das Land in dem kein Regen fällt. Le pays où il ne pleut pas’). Taking into account that the considerations in relation to the verbal elements of the signs under the visual comparison also apply to the aural comparison, it is concluded that the signs are aurally similar to an average degree.

Conceptually, according to the above considerations regarding the concepts with which the signs will be associated, the marks are conceptually related to the extent that they will both be linked to the concept of the word ‘TORTUGA’. However, they differ in the concepts associated with the additional verbal elements of the earlier mark (i.e. ‘ACADEMY EST. 1963’) which are, however, weak. Therefore, bearing in mind the weight attributed to these word elements, it is concluded that the signs are conceptually similar to a high degree.

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

3. 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, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

4. Global assessment, other arguments and conclusion

The goods are identical. The degree of attention is average. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree and conceptually similar to a high degree, as they coincide in the distinctive word ‘TORTUGA’.

The differences created by the word and figurative elements of the signs have a reduced impact on the overall impression created by them, for the reasons explained above in section c).

In contrast, the fact that the signs coincide in the verbal element ‘TORTUGA’ has a strong influence on the overall impressions created by the signs, considering that this word is distinctive and is placed at the beginning of the signs where consumers will focus their attention.

Account is taken of the fact that 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Taking all the above into account, the Opposition Division considers that the additional and differing elements of the signs are not sufficient to counteract the similarities between them arising from the fact that they coincide in the verbal element ‘TORTUGA’. Therefore, the relevant public, when encountering the signs in relation to identical goods, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) 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 European Union trade mark registration No 8 597 346. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Michele M. BENEDETTI - ALOISI

Angela DI BLASIO

Riccardo RAPONI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.