OPPOSITION No B 2 527 854

Melle Heerlien, Residence Soleil Salvan, Ch. des Dames 6 app. 12, 1922 Salvan, Switzerland (opponent), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, Netherlands (professional representative)

a g a i n s t

Kibuba družba za trgovino in založništvo d.o.o., Selo pri Vodicah 11c, 1217 Vodice, Slovenia (applicant).

On 16/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 527 854 is partially upheld, namely for the following contested goods and services:

Class 18:  Backpacks; gym bags; sports bags.

Class 25: Climbing footwear; clothing for sportswear; gloves; headwear; hooded tops; jackets; pants; pullovers; sports footwear; t-shirts; socks; underclothes; underwear; trousers; belts (clothing).

Class 35: Retail services in relation to footwear; retail services in relation to sporting articles; wholesale services in relation to clothing; wholesale services in relation to sporting equipment; retail services in relation to clothing; wholesale services in relation to footwear.

2. European Union trade mark application No 13 751 516 is rejected for all the above goods and services. It may proceed for the remaining goods, namely:

Class 18:  Travel bags; luggage.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 751 516. The opposition is based on European Union trade mark registrations No 11 547 189 and No 12 395 711. 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 European Union trade mark registration No 11 547 189.

1. The goods and services

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

Class 14: Jewellery, precious stones; horological and chronometric instruments.

Class 25: Clothing, footwear, headgear; belts [clothing]; shawls; leg clothing; denim clothing.

Class 35: Advertising; business management; business administration; office functions; wholesaling and retailing in relation to jewellery, costume jewellery, precious stones, horological and chronometric instruments, clothing, footwear, headgear, trousers and jeans; marketing; public relations; rental of advertising space; import-export agencies; franchising, namely consultation and assistance in business management, organization and promotion; shop window dressing; demonstration of goods; layout services for advertising purposes; business management of performing artists; modelling for advertising or sales promotion; compilation of statistics; market prospecting, research and analyzing; opinion polling services; compilation of information into computer databases; data file administration; administrative processing of purchase orders; organisation of trade fairs and exhibitions for commercial and advertising purposes; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet.

The contested goods and services are the following:

Class 18:  Backpacks; gym bags; sports bags; travel bags; luggage.

Class 25: Climbing footwear; clothing for sportswear; gloves; headwear; hooded tops; jackets; pants; pullovers; sports footwear; t-shirts; socks; underclothes; underwear; trousers; belts (clothing).

Class 35: Retail services in relation to footwear; retail services in relation to sporting articles; wholesale services in relation to clothing; wholesale services in relation to sporting equipment; retail services in relation to clothing; wholesale services in relation to footwear.

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 ‘namely’, used in the opponent’s list of services to show the relationship of individual 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 Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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

The opponent’s clothing, footwear, headgear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. The contested backpacks; gym bags; sports bags in Class 18 are related to the opponent’s clothing, footwear, headgear in Class 25. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer clothing, headgear and even footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing, footwear, headgear to directly produce and market related backpacks; gym bags; sports bags. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

Conversely, the contested travel bags; luggage are considered dissimilar to the opponent’s goods in Class 14, namely jewellery, precious stones and time instruments, and in Class 25, namely articles of clothing, headgear and footwear. Similarly, they are dissimilar to the opponent’s services in Class 35, namely advertising, marketing and promotional services, business assistance, management and administrative services, commercial trading and consumer information services, as well as business analysis, research and information services. All the aforementioned goods and services have natures and origins that are different from those of the contested travel bags; luggage and they do not satisfy the same needs. They are not distributed or offered through the same channels and they do not target the same public. Moreover, they are neither in competition nor complementary.

Contested goods in Class 25

Headwear is identically included in both lists of goods (including synonyms).

The contested climbing footwear; sports footwear are included in the broad category of the opponent’s footwear. Therefore, they are considered identical.

The contested clothing for sportswear; gloves; hooded tops; jackets; pants; pullovers; t-shirts; socks; underclothes; underwear; trousers; belts (clothing) are included in the broad category of the opponent’s clothing. Consequently, they are deemed identical.

Contested services in Class 35

The contested retail services in relation to footwear; wholesale services in relation to footwear include, as broad categories, the opponent’s wholesaling and retailing in relation to footwear; the aforesaid services also via electronic channels, including the internet. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical.

The contested wholesale services in relation to clothing; retail services in relation to clothing include, as broad categories, the opponent’s wholesaling and retailing in relation to clothing; the aforesaid services also via electronic channels, including the internet. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical.

The contested retail services in relation to sporting articles; wholesale services in relation to sporting equipment are considered similar to the opponent’s wholesaling and retailing in relation to clothing, footwear, headgear; the aforesaid services also via electronic channels, including the internet. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they may coincide in relevant public and distribution channels.

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 and services found to be identical or similar to various degrees are directed at the public at large as well as business customers with specific professional knowledge or expertise (e.g. wholesale services in relation to footwear; wholesale services in relation to clothing; wholesale services in relation to sporting equipment in Class 35). The degree of attention is considered to vary between average and above average depending on their cost and frequency of purchase.

3. The signs

247 jeans
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public.

The earlier mark is the word mark ‘247 jeans’.

The contested sign is a figurative mark composed of the numbers ‘247’, written in bold white slanted lettering against a black rectangular background; the last number is smaller than the preceding two. Underneath the rectangle is the verbal element ‘TWENTYFOURSEVEN’ in much smaller black upper case letters in a classic font and above it are three black geometrical forms, namely a quadrilateral, a quarter-circle and an abstract geometrical form with two peaks.

The verbal element ‘jeans’ of the earlier mark is commonly used throughout the European Union to describe trousers made of denim or, more generally, the fabric itself. Bearing in mind that the relevant goods and services are related to clothing, footwear and headgear that may be made out of denim, the aforementioned element is devoid of distinctiveness for these goods and services.

The combination of numbers, ‘247’, in the contested sign, due to the smaller size of the last number, may be perceived by part of the public as referring to an informal equivalent of the message ‘twenty-four hours a day, seven days a week’. It must be stressed that this reasoning applies to only part of the public, especially as it is more common to find the abovementioned numbers in the form ‘24/7’ or ‘24-7’. Bearing in mind that the contested goods are bags, clothing, footwear and headgear and the contested services are retail services in relation to these goods, the numbers ‘247’, represented in the contested sign as described above, may be understood by this part of the public as an indication that the aforementioned goods and services can be used or offered at all times. Therefore, the numbers ‘247’ in the contested sign are distinctive to a low degree in relation to these goods and services for this part of the public.

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

Although the contested sign has no component that is clearly more dominant, the verbal element ‘TWENTYFOURSEVEN’ appears secondary owing to its small size and its position underneath the other elements.

Visually, the signs coincide, as the most distinctive element of the earlier mark, namely the combination of numbers ‘247’, is entirely reproduced in the contested sign.

The signs differ due to the additional verbal elements, namely ‘jeans’ in the earlier mark and ‘TWENTYFOURSEVEN’ in the contested sign. However, it has been stated above that the former is descriptive in relation to the relevant goods and services whereas the latter is secondary.

Moreover, although the signs also differ by virtue of the figurative components in the contested sign, it must be borne in mind that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). As a consequence, the verbal elements of the contested sign, in particular the combination of numbers ‘247’, have more visual impact than its figurative components.

In the light of the above, the signs are visually similar to an average degree.

Aurally, irrespective of the differences in pronunciation in the different parts of the relevant territory, the signs coincide in the sound of the element ‘247’ for the part of the relevant public that may pronounce it as one number, ‘247’, or each number separately, ‘2’, ‘4’ and ‘7’.

Moreover, due to the smaller size of the number ‘7’ in the contested sign, it cannot be ruled out that a part of the public may pronounce the aforementioned element as a combination of the numbers ‘24’ and ‘7’. For this part of the public, the pronunciation of the signs will coincide only in the sound of the number ‘7’.

Although the signs differ due to the sound of the additional verbal elements, ‘jeans’ in the earlier mark and ‘TWENTYFOURSEVEN’ in the contested sign, it has been seen above that the former is non‑distinctive in relation to the relevant goods and services, whereas the latter is secondary. As a consequence, it cannot be ruled out that part of the public will not pronounce them.

Therefore, the signs are aurally identical for part of the relevant public. For the rest of the public, the signs will be aurally similar to a degree varying between low and high, depending on whether or not they will pronounce the element ‘247’ in the contested sign in the same way as in the earlier mark and whether or not they will pronounce the additional verbal elements of the signs, ‘jeans’ and ‘TWENTYFOURSEVEN’.

Conceptually, the element ‘247’ in the earlier mark will be perceived as one number or a combination of three numbers.

The verbal element ‘jeans’ in the earlier mark is commonly used throughout the European Union to describe trousers made of denim or, more generally, the fabric itself. As seen above, it is non‑distinctive in relation to the relevant goods and services.

The element ‘247’ of the contested sign will be perceived by the relevant public as one number or a combination of two (24 and 7) or three numbers (2, 4 and 7). As stated above, it cannot be ruled out that, for the part of the public that perceives it as the combination of ‘24’ and ‘7’, it may appear to be a short informal version of the message ‘twenty-four hours a day, seven days a week’ and will, therefore, be distinctive to a low degree in relation to the contested goods and services for this part of the public.

The verbal element ‘TWENTYFOURSEVEN’ of the contested sign has no meaning for the relevant public and will appear as a fanciful or foreign term.

The figurative components of the contested sign will be seen as such.

In the light of the foregoing, there is a conceptual similarity to an average degree for the part of the public that will perceive the same number in both signs, whether it is ‘247’ or the combination of ‘2’, ‘4’ and ‘7’. For the rest of the public, the signs are conceptually dissimilar.

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

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 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 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. 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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The relevant public is the non-English general public of the European Union with a degree of attention varying between average and above average.

The contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services.

The signs coincide, as the most distinctive element of the earlier mark, namely the combination of numbers ‘247’, is entirely reproduced in the contested sign. Conversely, the differences between the signs are mostly confined to elements with a non-distinctive or secondary character, such as the verbal elements ‘jeans’ in the earlier mark and ‘TWENTYFOURSEVEN’ in the contested sign, or with less visual impact, such as the figurative components of the contested sign.

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).

It must also be borne in mind that 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.

Moreover, a heightened level of attention in the case of specialised goods and services does not automatically lead to a finding of no likelihood of confusion; all other factors have to be taken into account. When there is a strong likelihood of confusion created by other factors, such as close overall similarity of the marks and the identity or similarity of the goods, the attention of the relevant public cannot be relied upon to prevent confusion (26/02/2010, R 1562/2008-2, VICTORY SLIMS, § 51).

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character, given that there are many trade marks that include the element ‘247’ in Class 25. In support of its argument, the applicant indicates that there are seven trade marks registered in the European Union that include the aforementioned element, without citing them directly or providing their certificate of registration.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, 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 element ‘247’. Under these circumstances, the applicant’s claims must be set aside.

Moreover, the applicant also states that there is no likelihood of confusion, given that the contested sign is used in specialised sports retail shops. It must be borne in mind that the examination of the likelihood of confusion carried out by the Office is a prospective examination. For this reason, specific marketing strategies are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that would be expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58). Consequently, the applicant’s claim must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-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 registration No 11 547 189. 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 and services found to be identical or similar to various degrees to those of the earlier trade mark.

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 earlier European Union trade mark registration No 12 395 711 for the figurative mark . Since this mark covers a narrower scope of goods and services, 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.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Loreto URRACA LUQUE

Marion GAILLARDMarta GARCÍA COLLADO

Julie GOUTARD

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 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 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 720 has been paid.