OPPOSITION No B 2 515 917

André Tanner, Dorfstr. 53, 8834 Schindellegi (Kanton Schwyz), Switzerland (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Brush Sportwear, Via E. Mattei 29/A, 31055 Quinto Di Treviso, Treviso, Italy (applicant).

On 02/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 515 917 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 713 706. The opposition is based on European Union trade mark No 11 629 532. 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 and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear, headgear; Suits; Layettes [clothing]; Swimsuits; Bathing trunks; Bath robes; Dresses; Belts; Scarfs; Gloves (clothing); Shirts; Hats; Jackets [clothing]; Hoods [clothing]; Neckties, Coats; Combinations [clothing]; Parkas; Cyclists’ clothing; Collar protectors; Singlets; Uniforms.

The contested goods are the following:

Class 25: Casualwear; Sportswear; Shorts; Clothing.

Clothing is identically contained in both lists of goods and services.

The contested casualwear, sportswear and shorts are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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.

3. The signs

ALPRAUSCH
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 earlier mark is a word mark, composed of the sole term ‘ALPRAUSCH’.

The Opposition Division cannot artificially divide a trade mark and perform an individual analysis of each word, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. However, the Court has held that consumers, when perceiving a verbal element, may break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25; and 06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51). In that sense, although the earlier sign as a whole is meaningless, ‘ALP’ and ‘RAUSCH’ are German words meaning ‘mountain pasture, alpine pasture or high pasture’ (information extracted from Duden at http://www.duden.de/rechtschreibung/Alp_Alm) and ‘intoxication, inebriation or exaggerated ecstatic state, happiness that elevates someone above his normal emotional state’ (information extracted from Duden at http://www.duden.de/rechtschreibung/Rausch), respectively. Therefore the whole expression will be interpreted by at least some of the German speakers as ‘pasture intoxication’. On the other hand, the part of the public that does not speak German will not understand the whole expression. Indeed, the component ‘ALP’ by itself and followed by ‘RAUSCH’, which is also meaningless for non-German speakers, will not be associated by this part of the public with the mountain range the Alps. Considering all the above, the earlier mark has no elements that could be considered clearly more distinctive or dominant than other elements.

Contrary to the opponent’s claim, the element ‘ALP’ does not dominate the overall impression of the earlier mark by virtue of being the mark’s first part. It is true that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. However, the fact that the beginning of the verbal element may have a stronger impact is a different issue from dominance.

The contested sign is a figurative mark, composed of the verbal element ‘ALP’ in yellow upper case letters framed between two white lines on a black rectangle. Above the upper line there is a depiction of a mountain range in white and below the lower line there is a depiction of a flower in white and yellow. The flower depicted is an edelweiss, which is a small alpine flowering plant, associated with the Alps (information extracted from the Collins English Dictionary at http://www.collinsdictionary.com/dictionary/english/edelweiss). Consequently, the pictures of the mountains and the flower along with the verbal element ‘ALP’ suggest the concept of mountains.

The figurative elements of the contested sign support the concept of the verbal element; therefore, they are considered secondary. As a consequence, the verbal element is considered more distinctive than the figurative elements.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their beginnings, the letters ‘ALP’. However, they differ in the letters ‘RAUSCH’ of the earlier mark, which have no counterpart in the contested sign. Consequently, the earlier mark has nine letters and the verbal element of the contested sign has only three, so they are of different lengths. Furthermore, the contested sign can be considered a short sign with regard to the verbal element. The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. Moreover, the contested mark is a figurative mark including two additional elements: a depiction of a mountain range and an edelweiss. Therefore, the signs are visually similar to a low degree.

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 ‘ALP’, present identically in both signs. The pronunciation differs in the sound of the letters ‘RAUSCH’ of the earlier mark, which have no counterpart in the contested sign. Consequently, the earlier mark is longer than the contested sign. Therefore, the signs are similar to a very low degree.

Conceptually, as stated above, part of the public in the relevant territory, namely German speakers, will perceive the earlier sign as ‘intoxication, exaggerated ecstatic state or happiness’ related to a mountain pasture or the alpine area. Likewise, that part of the public will perceive the contested mark as related to the mountains, reinforced by the depictions of the mountain range and the flower. For that part of the public, the signs are conceptually similar to the extent that they relate to the same concept of ‘Alps’ or ‘mountains’. However, they differ in the fact that the earlier sign includes the idea of ‘intoxication’.

For the rest of the public in the relevant territory, the earlier sign as a whole is meaningless. As mentioned above, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; therefore, it is not likely that this part of the public will dissect the word ‘ALP’ from ‘ALPRAUSCH’ in the earlier mark and associate it with the Alps. On the other hand, the entire verbal element of the contested sign, ‘ALP’, is very close to the equivalent words in the languages of the European Union (information extracted from UK Data Explorer, European word translator, at http://ukdataexplorer.com/european-translator/?word=alps). Reinforced by the pictures of a mountain range and the alpine flower, the sign is more likely to be associated with the Alps. For that part of the public, given that only one sign evokes a concept, the signs are not conceptually similar.

The opponent claims that the earlier mark refers to the Alp Mountains and that this reference is reinforced by the way the earlier mark is used. However, when assessing identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered or applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (09/04/2014, T‑623/11, Milanówek cream fudge, EU:T:2014:199, § 38). Therefore, the Opposition Division maintains that, for the part of the public that does not speak German, the element ‘ALP’ is unlikely to be dissected from the whole word mark and understood.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. 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 (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; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, 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).

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In the present case, the goods are identical and they target the public at large, whose degree of attention is average. The signs are visually and aurally similar to the extent that both include the letters ‘ALP’. However, they differ visually in the additional letters ‘RAUSCH’ of the earlier mark and the depictions of a mountain range and the edelweiss flower in the contested sign. Moreover, the lengths and structures of the verbal elements are highly different.

As explained above, the element ‘ALP’ constitutes the entire verbal element of the contested mark and can be identified as an individual element in the earlier sign by part of the relevant public. The fact that the element making up the earlier mark is reproduced in the mark applied for does not automatically lead to a likelihood of confusion, especially if that common element is either not distinctive or weak, or if additional elements outweigh this common element. Therefore, for the analysis of a composite sign versus a one-word sign the level of distinctiveness of the common or differing elements is of particular significance (12/01/2016, R 2725/2014-4, Alpenschmaus/Alpen, § 20-21).

In that sense, the additional element of the earlier mark, namely the verbal element ‘RAUSCH’, will be considered by those who understand the word (namely the German-speaking public) as unrelated to the goods at hand, and therefore it is considered to have a normal degree of distinctiveness for them. For the rest of the public, which does not understand German, the element is meaningless and therefore this part of the public will not dissect the earlier sign. The additional figurative elements of the contested sign, even though they support the concept evoked by the verbal element, have a normal degree of distinctiveness for the relevant goods. Furthermore, these figurative elements are depicted in a fanciful and distinctive manner, giving a different overall impression.

In addition, for the part of the public that does not speak or understand German, the differences between the signs at hand are enhanced, since there is no conceptual link between them.

Generally in clothes shops customers can themselves either choose the clothes 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 considerable visual differences between the signs caused by the additional figurative elements are particularly relevant when assessing the likelihood of confusion between them.

In conclusion, considering the distinctiveness of the additional and different elements of the signs in dispute and the strong aural and visual differences, and even assuming that the earlier mark enjoys an enhanced distinctiveness, the Opposition Division considers that the visual, aural and, for part of the public, conceptual differences, are enough to avoid a likelihood of confusion between the signs.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. In fact, in both decisions (11/12/2013, B 2 023 565, TEX; and 16/10/2014, B 2 224 973, skyrunner) the additional elements of the contested sign (the element ‘COLOR’ in B 2 023 565 and the stylisation of the letters in B 2 224 973) were found to be non-distinctive, and therefore not able to counteract the similarities between the marks in dispute. Furthermore, in the first decision the earlier mark was fully incorporated in the contested sign and in the second decision the earlier mark was a figurative mark while the contested sign was a word mark, which is not as in the present case.

In addition, the opponent claims the interdependence principle and holds that the beginnings of the signs are more important. However, as mentioned above, when comparing signs in Class 25, the figurative elements play an important role when assessing the likelihood of confusion between the signs. Therefore, even considering that the beginnings of the signs are identical and bearing in mind that the average consumer perceives a mark as a whole, the signs differ significantly and give different overall impressions.

Considering all the above, even bearing in mind that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Likewise, even assuming that the earlier mark enjoys enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.

COSTS

According to Article 85(1) EUTMR, 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 Rule 94(7)(d)(ii) EUTMIR, 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Beatrix STELTER

Martin EBERL

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall 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 720 has been paid.