OPPOSITION No B 2 582 644

Franz Schratt, Weststr. 12, 87561 Oberstdorf, Germany (opponent), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative)

a g a i n s t

Kimark SCA, Rue de la Terre à Briques 26, 7503 Froyennes, Belgium (applicant), represented by Cabinet Beau de Lomenie, Immeuble Eurocentre, Euralille, 179 boulevard de Turin, 59777 Lille, France (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 582 644 is upheld for all the contested goods.

2. European Union trade mark application No 14 273 502 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 of the European Union trade mark application No 14 273 502. The opposition is based on, inter alia, European Union trade mark registration No 9 275 512.  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 9 275 512.

1. The goods

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

Class 25: Clothing, footwear, in particular sports shoes and hiking shoes, ski boots, wet suits for water skiing, headgear.

The contested goods are the following:

Class 25: Clothing; Footwear (except orthopaedic) and headgear; Shirts; Clothing of leather with guards; Belts (clothing); Furs (clothing); Gloves [clothing]; Scarves; Neckties; Hosiery, socks; Slippers; Underwear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’ used in the opponent’s list of goods 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

The contested footwear (except orthopaedic) are identical to the opponent’s footwear, in particular sports shoes and hiking shoes, because the exclusion of orthopaedic footwear (never classified in Class 25, but in Class 10) from the contested goods or the listing of examples after ‘in particular’ in the opponent’s list of goods do not restrict the scope of protection of footwear in either case.

The contested shirts; clothing of leather with guards; belts (clothing); furs (clothing); gloves (clothing); scarves; neckties; hosiery, socks; underwear, are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested slippers are included in the broad category of the opponent’s footwear, in particular sports shoes and hiking shoes. 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. Contrary to the applicant’s arguments, the Opposition Division considers that the degree of attention of the relevant public will be average.

3. The signs

	1813
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 the slightly stylised four digit number ‘1803’, with enlarged digits ‘8’ and ‘3’, and the word element ‘Schratt’ written in smaller size, hidden behind the number.

The word ‘Schratt’ has no meaning, although it may be perceived as a surname by part of the relevant public. The element ‘1803’ will be perceived as the number it identifies. It cannot be excluded that for a part of the relevant public this four digit number may be perceived as a year. Nevertheless, the distinctiveness of these elements cannot be undermined in relation to the relevant goods, as they are not descriptive, allusive or otherwise weak. In this regard, it should be noted that the Opposition Division considers that in the context of clothing, footwear and headgear, it is highly unlikely that the number 1803, even if perceived as a year, could be descriptive of e.g. the year of production of the relevant goods.

The element ‘1803’ in the earlier mark is the dominant element as it is the most eye-catching. It overshadows the element ‘Schratt’ of the mark by virtue of its size and frontal position. The element ‘Schratt’ is significantly smaller and hidden behind the number in a way that impedes its perception. Additional emphasis on the dominant element ‘1803’ is given to digits ‘8’ and ‘3’, written in a bigger size than the digits ‘1’ and ‘0’.

The contested sign is a word mark made up of the four digit number ‘1813’. The figure will be perceived by the relevant public simply as the number it identifies, or as a year. In the same way as the number 1803 in the earlier mark, it has no relation to the relevant goods and is therefore distinctive.

Visually, the signs coincide in three out of four digits, namely ‘1’, ‘8’, ‘3’ placed in the same order in both signs and they differ in the third digit and in the additional element ‘Schratt’ in the earlier mark, which is hardly perceptible.

Overall, the signs are visually similar to an average degree.

Aurally, the word ‘Schratt’ is not likely to be pronounced, since it is overshadowed by the number ‘1813’ and not all the letters of the word are sufficiently visible. The elements that will be pronounced are the numbers. Considering that both signs consist of four digits, they will be pronounced as one number, namely ‘1803’ and ‘1813’ rather than a string of individual digits ‘1, 8, 0, 3’ and ‘1, 8, 1, 3’. Accordingly, the aural difference in the present case exists only in pronunciation of ‘3’ and ‘13’.

Therefore, considering the different pronunciation rules in different parts of the relevant territory, the aural similarity of signs may vary from average, for example in French (‘mille-huit- cent-trois’ and ‘mille-huit-cent-treize’) or Spanish (‘mil ochocientos tres’ and ‘mil ochocientos trece’), to high, for example in German ‘eintausendachthundertdrei’ and ‘eintausendachthundertdreizehn’ or Polish (‘tysiąc osiemset trzy’ and ‘tysiąc osiemset trzynaście’).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as numbers or years. However, since they refer to a different number or year, they are not conceptually similar. The same conclusion can be drawn for the part of the public that may perceive an additional concept of a surname in the earlier mark.

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 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

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.

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 identical. The signs are visually similar to an average degree and aurally similar to at least an average degree. They are not similar conceptually.

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). Furthermore, 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). Therefore, the visual and aural similarities between the contested sign and the dominant element of the earlier mark together with the identity of goods are clearly sufficient to counteract the conceptual difference between them, especially for the sake of the consumers with only an average degree of attention.

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 9 275 512. It follows that the contested trade mark must be rejected in its entirety.

As the European Union trade mark registration No 9 275 512 leads to the success of the opposition and to the rejection of the contested trade mark in its entirety, there is no need to examine the other earlier right invoked by the opponent and the related evidence of use (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

Zuzanna STOJKOWICZ

José Antonio GARRIDO OTAOLA

Erkki MÜNTER

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.