OPPOSITION No B 2 553 595
K&L GmbH & Co. Handels-KG, Paradeisstr. 67, 82362, Weilheim, Germany (opponent), represented by Fechner Rechtsanwälte PartmbB, Poststraße 37, 20354 Hamburg, Germany (professional representative)
a g a i n s t
Kan Trademark Sp. z o.o., Wiączyńska 8A, 92-760 Łódź, Poland (applicant), represented by Aleksandra Młoczkowska, ul. Twarda 4, 00-105 Warszawa, Poland (professional representative).
On 09/09/2019, the Opposition Division takes the following
1. Opposition No B 2 553 595 is partially upheld, namely for the following contested goods:
Class 14: Jewellery; gemstones, pearls and imitations thereof; ornaments [jewellery, jewelry (am)]; jewellery ornaments; trinkets coated with precious metal; imitation jewellery ornaments.
Class 18: Umbrellas and parasols; luggage, bags, wallets and other carriers; straps (leather -); straps made of imitation leather.
Class 25: Clothing; headgear; footwear; clothing.
2. European Union trade mark application No 13 746 102 is rejected for all the above goods. It may proceed for the remaining goods, namely:
Class 14: Precious metals, and imitations thereof.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 746 102 for the figurative mark below:
The opposition is based on:
(1) European Union trade mark registration No 1 916 519 for the word mark ‘TANTUM’;
(2) European Union trade mark registration No 10 568 822 for the word mark ‘Tantum O.N.’;
(3) German trade mark registration No 1 171 108 for the figurative mark ;
(4) international trade mark registration No 569 210, designating Austria, Italy, the Benelux and France for the word mark ‘Tantum O.N.’.
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.
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 trade marks: (1) European Union trade mark registration No 1 916 519 and (2) European Union trade mark registration No 10 568 822.
a) The goods
The goods on which the opposition is based are the following:
(1) EUTM 1 916 519:
Class 3: Perfumery.
Class 18: Leather and imitations of leather, and goods made of these materials (included in class 18); animal skins; trunks and vanity cases (not fitted); beach bags; handbags, rucksacks; umbrellas and parasols.
Class 25: Outer and underclothing, gloves, scarves, neckties, footwear, stockings, tights, headgear, belts; shoes.
(2) EUTM 10 568 822:
Class 14: Costume jewellery; clocks.
Class 18: Leather goods, included in class 18; cases, bags, pouches, rucksacks.
Class 25: Clothing, including socks and stockings; footwear, headgear; belts.
The contested goods are the following:
Class 14: Jewellery; gemstones, pearls and precious metals, and imitations thereof; ornaments [jewellery, jewelry (am)]; jewellery ornaments; trinkets coated with precious metal; imitation jewellery ornaments.
Class 18: Umbrellas and parasols; luggage, bags, wallets and other carriers; straps (leather -); straps made of imitation leather.
Class 25: Clothing; headgear; footwear; clothing.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’, used in the opponent’s list of goods in Class 25 of earlier EUTM 10 568 822, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).
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 14
The contested jewellery includes, as a broader category, the opponent’s costume jewellery in Class 14 of earlier mark (2). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested ornaments [jewellery, jewelry (am)] overlap with the opponent’s costume jewellery in Class 14 of earlier mark (2). Therefore, they are identical.
The contested gemstones, pearls and imitations thereof; jewellery ornaments; trinkets coated with precious metal; imitation jewellery ornaments are similar to the opponent’s costume jewellery in Class 14 of earlier mark (2). All these items are decorative, and so can have the same purpose. They target the same relevant public and may be produced by the same companies and sold through the same channels of distribution.
However, the contested precious metals, and imitations thereof are considered to be dissimilar to the opponent’s goods in Class 14 of earlier mark (2). The contested goods are raw materials for use in industry rather than for direct purchase by the final consumer. On the other hand, the opponent’s goods in this class are finished goods. The fact that precious metals and alloys are used in the production process of the opponent’s jewellery articles is not sufficient to render them similar. Their natures, purposes, usual origins and distribution channels are different and they are not in competition or complementary.
The same conclusion applies when comparing the contested precious metals, and imitations thereof with all the other goods of the opponent, namely the opponent’s goods in Class 18 of earlier marks (1) and (2) (leather and imitations of leather, and goods made of these materials, items used for transporting personal goods, umbrellas and parasols), in Class 25 of earlier marks (1) and (2) (composed of clothing, headgear and footwear) and in Class 3 of earlier mark (1) (perfumery). Their nature, purpose and method of use are different. They do not have the same usual origins, distribution channels and are neither in competition, nor complementary.
Contested goods in Class 18
The contested umbrellas and parasols are identically contained in the opponent’s list of goods in Class 18 of earlier mark (1).
The contested luggage overlaps with the opponent’s cases in Class 18 of earlier mark (2). Therefore, they are identical.
The contested bags are identically contained in the opponent’s list of goods in Class 18 of earlier mark (2).
The contested wallets and other carriers are at least similar to the opponent’s handbags in Class 18 of earlier mark (1). Insofar as all these goods are used for carrying items, they have the same purpose and target the same public. Furthermore, they can coincide in producers and distribution channels.
The contested straps (leather -) and straps made of imitation leather may be produced by the same undertakings as the opponent’s bags in Class 18 of earlier mark (2). They are usually sold through the same distribution channels and target the same relevant public. Therefore, they are similar.
Contested goods in Class 25
The contested goods in this class are identical to the opponent’s goods in the same class covered by both earlier marks, either because they are identically contained in both lists or because the opponent’s goods are included in either the contested clothing or footwear.
b) 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 or similar are directed at the public at large.
The degree of attention may vary from average to relatively high, depending on the exact nature of the goods purchased and their price. In particular, jewellery items in Class 14 may include luxury items or items intended as gifts. In its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. Therefore, a relatively high degree of attention on the part of the consumer may be assumed.
c) The signs
(2) Tantum O.N.
Earlier trade marks
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 word ‘UNIQUE’ of the contested sign is non-distinctive as it is a laudatory term, conveying information of a promotional or advertising nature (23/09/2009, T-396/07, Unique, EU:T:2009:353, § 21), at least for the English- and French-speaking public. Consequently, and since the pronunciation of the words ‘TANTUM’ and ‘TATUUM’ has slightly more commonalities in English, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark (1) is composed of one word ‘TANTUM’ which has no meaning for the public under analysis and is distinctive to a normal degree.
The earlier mark (2) is composed of the word ‘Tantum’ followed by ‘O.N.’. Neither of these elements has a meaning for the public under analysis. Therefore, neither of them is more distinctive in relation to the relevant goods.
The contested sign is figurative. It is composed of the word ‘UNIQUE’ slightly stylised and a word that is likely to be read as ‘TATUUM’, as argued by the parties. This latter element is written in white letters against a dark rectangular background. The letters are standard and the letters ‘UU’ overlap.
As far as the impact of these elements is concerned, the applicant argues that, in the contested sign, the element ‘UNIQUE’ is the most eye-catching (dominant) element.
Within the assessment of the dominant character of one or more components, the intrinsic qualities (size, striking graphical representation, etc.) of each of those components have to be compared with the intrinsic qualities of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23/09/2014, T-341/13, So’bio etic (fig.) / SO…? et al., EU:T:2014:802, § 67).
The word ‘TATUUM’ set against a dark rectangular background is smaller than the word ‘UNIQUE’. However, it is the first element of the sign positioned above the word ‘UNIQUE’ and will be read first. The plain dark rectangular background cannot be regarded as an element of particular importance but it has the effect of making the white word element ‘TATUUM’ stand out, thus highlighting it. In view of this, the Opposition Division considers that none of these elements is clearly visually dominant (more eye-catching).
The word ‘TATUUM’ has no meaning in English and is distinctive in relation to the relevant goods. The graphical representation of the letters reduced to standard white typeface is non-distinctive and the effect created by the overlapping letters ‘UU’ should not be overestimated as this combination neither stands out visually nor is particularly elaborate.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right (and from top to bottom), which makes the part placed at the left (or at the top) of the sign (the initial part) the one that first catches the attention of the reader.
Furthermore, both earlier marks are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is written in upper or lower case letters.
Visually, there are similarities between the word ‘TANTUM’ of the earlier marks and the element ‘TATUUM’ of the contested sign. These words share five letters ‘TA*TU*M’ and differ in the third letter ‘N’ of ‘TANTUM’ of the earlier marks and in that the ‘U’ is doubled in the word ‘TATUUM’ of the contested sign. The earlier mark (2) also differs in the additional elements ‘O.N.’. Furthermore, the signs differ in the additional word ‘UNIQUE’ of the contested sign and figurative aspects of that sign described above. Since the similarities concern the only element of the earlier mark (1), the first element of the earlier mark (2) and the distinctive element of the contested sign, while the differences are confined to the elements and aspects with less impact, it is considered that the signs are visually similar to at least an average degree.
Aurally, the pronunciation of the signs coincides in the sound of five letters ‘TA*TU*M’ of the word ‘TANTUM’ of the earlier marks and the word ‘TATUUM’ of the contested sign. The double ‘U’ of the latter will be pronounced as one sound. The pronunciation of these words differs in the sound of the additional letter ‘N’ of the word ‘TANTUM’ of the earlier marks, being the third letter of that word. Furthermore, the pronunciation differs in the sound of the additional letters ‘O.N.’ of the earlier mark (2) and in the sound of the additional word ‘UNIQUE’ of the contested sign. Since the similarities concern the only element of the earlier mark (1), the first element of the earlier mark (2) and the distinctive element of the contested sign, while the differences are confined to the letters placed at the end of the earlier mark (2) and the non-distinctive word ‘UNIQUE’ of the contested sign, positioned below the word ‘TATUUM’, it is considered that the signs are aurally similar to at least an average degree.
Conceptually, neither of the signs has a meaning as a whole. Although the additional word ‘UNIQUE’ evokes a concept, it is not sufficient to establish any conceptual difference, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier marks
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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier marks must be seen as normal.
e) Global assessment, other arguments and conclusion
The goods are partially identical or similar and partially dissimilar. The signs are visually and aurally similar to at least an average degree. The conceptual comparison is neutral. The earlier marks have a normal degree of distinctiveness. The public’s level of attention may vary between average and higher than average.
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).
Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).
In view of all the above, given that the similarities were found between the word ‘TANTUM’, which is the only element of the earlier distinctive mark (1) and the first element of the earlier mark (2), and ‘TATUUM’ which is the distinctive element of the contested sign, the additional differentiating elements with less impact are not sufficient to counteract these similarities. The consumers, even if their attention is heightened, could be led to believe that the identical and similar goods bearing the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 1 916 519 and No 10 568 822. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade marks.
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) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.
The opponent has also based its opposition on German trade mark registration No 1 171 108 for the figurative mark covering articles of clothing and shoes in Class 25 and international trade mark registration No 569 210, designating Austria, Italy, the Benelux and France for the word mark ‘Tantum O.N.’ covering articles of clothing and footwear in Class 25.
Since these marks cover a narrower scope of goods than the goods already compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful for only some 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
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.