OPPOSITION No B 2 553 504

OPPOSITION DIVISION

OPPOSITION No B 2 553 504

SOS Brands AB, Videvägen 9, 247 64 Veberöd, Sweden (opponent), represented by Budde Schou A/S, Hausergade 3, 1128 Copenhagen, Denmark (professional representative)

a g a i n s t

SOS The Fashion Company GmbH, c/o Steuerkanzlei Michael Fleischer, Budapester Straße 31, 10787 Berlin, Germany (applicant), represented by SKW Schwarz Rechtsanwälte, Kurfürstendamm 21 Neues Kranzler Eck, 10719 Berlin, Germany (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 553 504 is upheld for all the contested goods, namely:

Class 18: Luggage, bags, wallets and other carriers; Faux fur; Leather cloth; Leather and imitation leather; Portfolio cases [briefcases]; Briefcases and attache cases; Work bags; Beach bags; Evening handbags; Pouch baby carriers; Belt bags and hip bags; Wallets with card compartments; Wallets including card holders; Wallets for attachment to belts; Diplomatic bags; Attaché cases; Shopping bags; Holders in the nature of cases for keys; Gladstone bags; Small clutch purses; Valises; Holdalls; Handbags; Handbags, purses and wallets; Gentlemen’s handbags; Jewelry rolls for travel; Small rucksacks; Cosmetic purses; Vanity cases, not fitted; Tie cases; Credit card cases [wallets]; Toiletry bags; Trunks [luggage]; Travelling handbags; Rucksacks; Bags for sports; Bags; Pouches; Haversacks; Clutch bags; Waterproof bags; Tool bags [empty] for motor cycles; Tool bags of leather, empty; Coin purses not made of precious metal; Travel garment covers; Overnight bags; Leather purses; Briefcases [leather goods]; Leather bags and wallets; Banknote holders; Pullmans; Key cases; Key cases made of leather; School bags.

Class 25: Clothing; Headgear; Footwear; Dress shoes; Work shoes; Work boots; Bath sandals; Bath slippers; Bath shoes; Footwear for women; Ladies’ boots; Flip-flops; Casual footwear; Rain boots; Half-boots; Inner socks for footwear; Sandals; Mules; Lace boots; Slip-on shoes; High-heeled shoes; Footwear for men; Children’s footwear; Footwear not for sports; Boots for sports; Boots; Esparto shoes or sandals; Beach shoes; Walking shoes; Winter boots; Leather shoes; Deck shoes; Canvas shoes; Slippers; Pumps [footwear]; Swim wear for gentlemen and ladies; Bathing trunks; Bath robes; Bandanas [neckerchiefs]; Printed t-shirts; Bermuda shorts; Bikinis; Blazers; Blousons; Dresses; Women’s outerclothing; Panties; Three piece suits [clothing]; One-piece suits; Women’s ceremonial dresses; Formal evening wear; Shirts; Men’s suits; Menswear; Jackets [clothing]; Denims [clothing]; Men’s and women’s jackets, coats, trousers, vests; Neckties; Short-sleeved or long-sleeved t-shirts; Leather jackets; Lingerie; Leggings [trousers]; Outerclothing for girls; Outerclothing; Dress shirts; Fur coats and jackets; Pajamas (Am.); Mufflers [clothing]; Shawls and headscarves; Breeches for wear; Shirts and slips; Shorts; Socks; Socks and stockings; Stockings; Sweaters; Sweat shirts; Tee-shirts; Trainers [footwear]; Vest tops; Bottoms [clothing]; Underwear; Wind resistant jackets; Bathing caps; Baseball caps; Bobble hats; Caps with visors; Leather headwear; Children’s headwear; Caps [headwear]; Sun hats; Sports caps; Infants’ footwear; Rainshoes; Footwear [excluding orthopedic footwear].

2. European Union trade mark application No 13 945 217 is rejected for all the contested goods. It may proceed for the remaining goods in Class 14.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 945 217, namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, European Union trade mark registration No 6 388 771. 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 6 388 771.

The goods

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

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

Leather and imitation leather; trunks [luggage]; travelling handbags are identically contained in both lists of goods, including synonyms.

The contested leather cloth is included in the broad category of the opponent’s animal skins. Therefore, they are identical.

The contested tool bags of leather, empty; leather purses; briefcases [leather goods]; leather bags and wallets; key cases made of leather are included in the broad category of the opponent’s goods made of these materials [leather and imitations of leather] and not included in other classes. Therefore, they are identical.

The contested luggage, bags, wallets and other carriers; portfolio cases [briefcases]; briefcases and attache cases; work bags; beach bags; evening handbags; belt bags and hip bags; wallets with card compartments; wallets including card holders; wallets for attachment to belts; diplomatic bags; attaché cases; shopping bags; holders in the nature of cases for keys; gladstone bags; small clutch purses; valises; holdalls; handbags; handbags, purses and wallets; gentlemen’s handbags; jewelry rolls for travel; small rucksacks; cosmetic purses; vanity cases, not fitted; tie cases; credit card cases [wallets]; toiletry bags; rucksacks; bags for sports; bags; pouches; haversacks; clutch bags; tool bags [empty] for motor cycles; coin purses not made of precious metal; travel garment covers; overnight bags; banknote holders; key cases; school bags; waterproof bags; pouch baby carriers and pullmans overlap with the opponent’s goods made of these materials [leather and imitations of leather] and not included in other classes, since they are or may be made of leather or imitations of leather. Therefore, they are identical.

The contested faux fur is similar to a high degree to the opponent’s imitations of leather, since both are raw materials used to make bags, clothing, headgear. They are generally produced by the same manufacturers (companies producing imitation leather/fur goods) and they are sold through the same distribution channels. Moreover, they often target the same consumers.

Contested goods in Class 25

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

The contested dress shoes; work shoes; work boots; bath sandals; bath slippers; bath shoes; footwear for women; ladies’ boots; flip-flops; casual footwear; rain boots; half-boots; sandals; mules; slip-on shoes; high-heeled shoes; footwear for men; children’s footwear; footwear not for sports; boots for sports; boots; esparto shoes or sandals; beach shoes; walking shoes; winter boots; leather shoes; deck shoes; canvas shoes; slippers; pumps [footwear]; infants’ footwear; rainshoes; footwear [excluding orthopedic footwear]; lace boots are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested inner socks for footwear; swim wear for gentlemen and ladies; bathing trunks; bath robes; printed t-shirts; bermuda shorts; bikinis; blazers; blousons; dresses; women’s outerclothing; panties; three piece suits [clothing]; one-piece suits; women’s ceremonial dresses; formal evening wear; shirts; men’s suits; menswear; jackets [clothing]; denims [clothing]; men’s and women’s jackets, coats, trousers, vests; neckties; short-sleeved or long-sleeved t-shirts; leather jackets; lingerie; leggings [trousers]; outerclothing for girls; outerclothing; dress shirts; fur coats and jackets; pajamas (am.); mufflers [clothing]; bandanas [neckerchiefs]; shawls and headscarves; breeches for wear; shirts and slips; shorts; socks; socks and stockings; stockings; sweaters; sweat shirts; tee-shirts; trainers [footwear]; vest tops; bottoms [clothing]; underwear; wind resistant jackets are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested bathing caps; baseball caps; bobble hats; caps with visors; leather headwear; children’s headwear; caps [headwear]; sun hats; sports caps are included in the broad category of the opponent’s headgear. Therefore, they are identical.

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 to high degree are directed at the public at large. The degree of attention is normal.

The signs

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 figurative mark composed of verbal elements – ‘S.O.S.’, written in white upper case letters, and ‘StreetOceanSnow’, written in smaller black lower case letters except that the three letters ‘S’, ‘O’ and ‘S’ are upper case – and a figurative element – a black and white elliptical background.

The contested sign is a figurative mark composed of verbal elements – ‘SOS’, written in black upper case letters, and ‘The studio’, written in smaller black stylised lower case letters except that the letter ‘T’ is upper case – and figurative elements – a large black rectangle including two identical white squares placed in the centre. The white square on the left serves as a background for the verbal elements, while the one on the right contains black dots and dashes. These dots and dashes will be understood by a small part of the public as the Morse code for SOS.

The earlier sign is composed of distinctive verbal elements and a less distinctive figurative element of a purely decorative nature, since they serve as a background for the verbal element ‘S.O.S.’.

The verbal element ‘S.O.S.’ of the earlier mark, placed on the elliptical background, is the dominant element, as it is the most eye-catching because of its size and central position, while the verbal element ‘StreetOceanSnow’ is considerably smaller and in the lower part of the sign.

The contested sign is composed of distinctive verbal elements and, for the majority of the public, which will not associate it with the Morse code for SOS, a less distinctive figurative elements of a purely decorative nature.

The verbal element ‘S.O.S.’ of the contested mark, placed on the white square on the left, is the dominant element, as it is the most eye-catching because of its size and first position, while the verbal element ‘The studio’ is considerably smaller and hardly legible.

Visually, the signs coincide in the letters ‘S’, ‘O’ and ‘S’, which are large and separated by dots in the first verbal element of the earlier trade mark and constitute the first verbal element of the contested sign. ‘SOS’ is the dominant element of both signs.

However, they differ in the dots separating the letters ‘S’, ‘O’ and ‘S’ in the earlier mark, in the other verbal elements (‘StreetOceanSnow’ in the earlier sign and ‘The studio’ in the contested mark), which are not dominant, and in the figurative elements (a black and white elliptical background in the earlier sign and a large black rectangle including two identical white smaller squares containing the verbal elements and black dots and dashes in the contested mark), which are less distinctive and of a purely decorative nature, at least for the part of the public that does not associate the black dots and dashes with the Morse code for SOS.

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).

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average 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 ‘S’, ‘O’ and ‘S’ present identically in both signs.

The pronunciation differs in the sound of the verbal element ‘StreetOceanSnow’ of the earlier trade mark, which has no counterpart in the contested mark, and of the words ‘The studio’ of the contested mark, which have no counterparts in the earlier sign. Those word elements are less dominant than the letters ‘S’, ‘O’ and ‘S’. The dots separating the letters ‘S’, ‘O’ and ‘S’ in the earlier mark do not constitute a significant aural difference, since they do not change the pronunciation. It is highly probable that such dots are not pronounced at all.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive ‘SOS’ in the contested and earlier trade marks (irrespective of the presence of dots between the letters) as the international distress signal. It is well-known and universally perceived in more general terms as an urgent call for help.

As regards the remaining verbal element of the earlier sign, although the sign as a whole does not have any meaning for the public in the relevant territory, part of the public may recognise the words ‘street’, ‘ocean’, and ‘snow’, either because they are basic English words, such as ‘street’ and ‘snow’, or because they are orthographically identical or similar to the equivalents in other languages, for instance ‘ocean’ versus ‘oceano’ in Italian, Portuguese and Spanish or ‘ozean’ in German.

As regards the remaining verbal elements of the contested sign, part of the public may recognise the English article ‘the’ and the word ‘studio’ because it is orthographically identical or similar to the equivalent in other languages, for example ‘studio’ in Italian or ‘estudio’ in Spanish. Moreover, the dots and dashes included in the small white rectangle on the right will be understood by part of the public as the Morse code for SOS.

In any case, the signs will be associated with the same meaning on account of the element ‘S.O.S.’/‘SOS’ in both of them and to that extent the signs are conceptually similar to an average degree.

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

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 average.

Global assessment, other arguments and conclusion

The relevant public for the goods in question includes the public at large, whose degree of attention is average.

The earlier mark has an average degree of distinctiveness.

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). In the present case, the goods are partly identical and partly similar to a high degree.

The signs are visually, aurally and conceptually similar on account of the elements ‘S.O.S.’ of the earlier mark and ‘SOS’ of the contested sign. As already explained in section c), the similarities lie in the dominant element of both signs. In terms of recognition and recall, these elements tend to be of more importance. These are the elements that first catch the consumer’s attention and will be remembered more clearly than the rest of the signs.

Consumers tend to remember similarities, rather than dissimilarities, between signs. 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).

The Opposition Division finds that the differences between the marks are confined to non-dominant verbal elements and to graphical elements of a purely decorative nature (the elliptical background, the black rectangular background, the small white rectangles) or associated with the meaning of the main dominant element (the dots and dashes in the small white rectangle on the right of the contested sign, which will be understood by part of the public as the Morse code for SOS); therefore, they are not sufficient to counteract the similarities between them and to safely exclude the likelihood of confusion and in particular the likelihood of association. The relevant consumer may erroneously think that the identical or highly similar goods come from the same undertaking or from economically linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘SOS’. In support of its argument, the applicant refers to some trade mark registrations in German, Italy, France and Poland.

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 ‘SOS’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 388 771.

It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 6 388 771 leads to the success of the opposition and to the rejection of the contested trade mark for all 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).

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Karin KUHL

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 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

Latest News

FEDERAL CIRCUIT AFFIRMS TTAB DECISION ON REFUSAL
May 28, 2021
For the purpose of packaging of finished coils of cable and wire, Reelex Packaging Solutions, Inc. (“Reelex”) filed for the registration of its box designs under International Class 9 at the United States Patent and Trademark Office (“USPTO”).
THE FOURTH CIRCUIT DISMISSES NIKE’S APPEAL OVER INJUNCTION
May 27, 2021
Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.
UNO & UNA | DECISION 2661950
May 22, 2021
Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)