OPPOSITION No B 2 573 999

Marc Cain GmbH, Marc-Cain-Allee 4, 72411 Bodelshausen, Germany (opponent), represented by KPMG Rechtsanwaltsgesellschaft mbH, Ganghoferstr. 29, 80339 München, Germany (professional representative)

a g a i n s t

Marcamp, Têxteis Lda., Rua Vila Carreiras 106 Ap. 120, 4590 909 Pacos De Ferreira, Portugal (applicant), represented by J. Pereira Da Cruz, S.A. Rua Victor Cordon 14, 1249-103 Lisboa, Portugal (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 573 999 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 246 821 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 246 821. The opposition is based on, inter alia, European Union trade mark No 12 315 198. 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 12 315 198.

1. The goods and services

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

Class 18: Leather and imitation leather goods made thereof; Trunks and travelling bags; Umbrellas, sun umbrellas, parasols.

Class 24: Textiles and textile goods, not included in other classes; Bed covers; Table covers.

Class 25: Clothing, footwear, headgear.

Class 35: Franchisers and franchisees, namely professional business and organisational consultancy for franchising concepts; Online, retailing and catalogue mail order, included in class 35, relating to perfumery, essential oils, cosmetics, spectacles, spectacle cases, spectacle frames, sunglasses, goggles for sports, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, and goods made of these materials, trunks and travelling bags, umbrellas, parasols, textiles and textile products, included in class 24, bed covers, table covers, clothing, footwear, headgear.

The contested goods and services are the following:

Class 24: Fabrics for uniforms and work clothes.

Class 25: Workclothes; Work shoes; Overalls; Uniforms; Hats.

Class 35: Retailing of textiles, Working clothes and Work footwear.

Preliminary remark:

The applicant argues that the opponent’s goods and services are exclusively related to textile articles for the home and clothing and accessories in the field of ready-to wear and fine leather goods, only related to ‘ladies’ fashion’. It submits a printout from the opponent’s website in support of its argument. Furthermore, it adds that the goods should be considered dissimilar in view of their different natures and purposes and different distribution channels.

It must be recalled in this regard that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

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 24

The contested fabrics for uniforms and work clothes are included in the opponent’s textiles and are, therefore, identical.

Contested goods in Class 25

The contested workclothes; overalls; uniforms are included in the opponent’s clothing. The contested work shoes are included in the opponent’s footwear. The contested hats are included in the opponent’s headgear. Therefore, all of the contested goods in Class 25 are identical.

Contested services in Class 35

Retailing of textiles is identically contained in both lists of services (including synonyms).

The contested retailing of working clothes is included in the opponent’s online, retailing and catalogue mail order, included in class 35, relating to clothing and the contested retailing of work footwear is included in the opponent’s online, retailing and catalogue mail order, included in class 35, relating to footwear. Therefore, these services 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 and services found to be identical are directed at the public at large.

The applicant argues that the degree of attention is high but does not submit any arguments in favour of such a position. The characteristics of the goods and services at issue are not such that the public will pay a particularly high degree of attention. A higher than average degree of attention is usually connected with expensive purchases and the purchase of potentially hazardous or technically sophisticated goods. The average consumer also often seeks professional assistance or advice when choosing or buying certain types of goods and services (e.g. cars, pharmaceutical products). A higher than average degree of attention can also apply to goods when brand loyalty is important for the consumer.

None of the above, or any other reason which may justify the applicant’s contentions, applies to the goods and services at issue. In particular, the contested work clothes are not clothes for protection against injuries, hazards and accidents (since such clothes are classified in Class 9), but just normal clothes used for work, such as uniforms. Therefore, the degree of attention is considered average.

3. 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 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, for reasons linked to the specific pronunciation of the signs in French, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

Both signs are figurative trade marks consisting of one verbal element depicted in stylised upper case letters. The verbal element is ‘MARCCAIN’ in the earlier mark, in which the two letters ‘C’ overlap and some letters are leaning to the right (i.e. the initial ‘M’ and the two letters ‘A’), and ‘MARCAMP’ in the contested sign, which is depicted in bold black standard letters with some tiny black marks around the letters producing the impression that the word has been stamped or printed.

The verbal elements are meaningless and are the main elements of the signs; they are more distinctive than the graphic elements, namely the particular graphic depictions of the words, which fulfil clearly decorative roles. Neither mark has any elements that have more visual impact than others.

Visually, the signs coincide in their first letters, ‘MARC’, as well as in the letter ‘A’ placed in the sixth position in the earlier mark and the fifth position in the contested mark. The verbal elements are approximately the same length. The signs differ in the additional ‘C’ and the final two letters, ‘IN’, of the earlier mark, as well as in the final letters, ‘MP’, of the contested sign. They also differ in their specific graphic depictions.

In this respect, it is noted that the specific graphic depictions of the words have a clearly decorative value in both marks.

Furthermore, 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).

The identical letters are placed at the beginnings of the signs, which enhances the impact of the commonality. 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

In view of the foregoing, the signs are visually similar to an average degree.

Aurally, in French, the earlier mark is pronounced /mar-kɛn/, because the double ‘C’ is pronounced as a single ‘C’ and the letters ‘AI’ produce the sound /ɛ/, and the contested mark is pronounced /mar-kan/, because the final letter, ‘P’, is not pronounced and the ‘M’ before the ‘P’ will be pronounced ‘N’ (as in the French word ‘camp’ or ‘champ’).

Therefore, both signs have two syllables, the first being identical and the second coinciding in the two consonant sounds and differing in only the vowel sound. The difference is clearly outweighed by the coincidences, particularly bearing in mind that the string of identical sounds, /mark/, is at the beginning of the signs.

The rhythms and intonations of both signs are the same.

Therefore, in French, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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.

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. 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).

As has been established above, the earlier mark enjoys a normal degree of distinctiveness, the contested goods and services are identical and they target a public whose degree of attention is average. Furthermore, the signs are visually similar to an average degree and aurally similar to a high degree, while they do not convey any clearly differentiating concepts that will aid the relevant consumers to distinguish between them.

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).

In the light of all the foregoing considerations, the Opposition Division concludes that it is likely that the French-speaking public may mistake one mark for the other.

The applicant contends that several trade marks starting with the letters ‘MARC’ coexist on the market and that coinciding in this sole respect is not sufficient to deem that the signs at issue in the present case are confusingly similar. In this respect, the Opposition Division clarifies that the outcome that a likelihood of confusion exists is not established on the sole basis of the presence of the letters ‘MARC’ in both signs. It also takes into account, as explained in the previous sections, the facts that the signs are similar in structure and length, that there are no clearly differentiating elements, that the signs also have the letter ‘A’ in common in approximately the same position and that they are aurally highly similar, even in their endings notwithstanding their different final letters, ‘IN’ and ‘MP’.

The applicant also refers to a previous decision of the Office to support its argument that the goods are not identical but only similar to a low degree. 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

The applicant also argues that the opponent’s trade mark includes the verbal element ‘MARC CAIN’ (two words); however, this is clearly not how the French-speaking public will perceive the trade mark given the absence of a space between the two letters ‘C’ (which in fact overlap).

Therefore, the applicant’s arguments are to be set aside.

In view of the foregoing, there is a likelihood of confusion on the part of the French-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 12 315 198. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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

Anna ZIÓŁKOWSKA

Catherine MEDINA

Frédérique SULPICE

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.