OPPOSITION No B 2 625 625

Minimum A/S, Balticagade 16, 8000 Arhus C, Denmark (opponent), represented by Bech-Bruun Law Firm, Værkmestergade 2, 8000 Århus C, Denmark (professional representative)

a g a i n s t

Guangdong Light Luggage & Bags Co. Ltd., 11F, No. 52 Dezheng Road South Guangzhou, People’s Republic of China (applicant) represented by A.BRE.MAR. S.R.L., Via Servais, 27, 10146 Torino, Italy (professional representative).

On 23/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 625 625 is upheld for all the contested goods.

2. European Union trade mark application No 14 434 419 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 European Union trade mark application No 14 434 419. The opposition is based on European Union trade mark registrations No 5 762 828 and No 7 385 628.

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 registrations No 5 762 828.

1. The goods and services

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing and scouring preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

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:

Class 3: Cakes of toilet soap; lotions for cosmetic purposes; cleansing milk for toilet purposes; facial cleanser; essential oils; nail polish; cosmetics; perfumes; air fragrancing preparations.

Class 18: Purses; school satchels; rucksacks; shopping bags; handbags; briefcases; valises; vanity cases, not fitted; bags for sports; bags.

Class 25: Clothing; footwear; shoes; hats; hosiery; gloves [clothing]; scarfs; girdles.

Contested goods in Class 3

Cosmetics and essential oils are identically contained in both lists of goods.

The contested cakes of toilet soap are included in the broad category of the opponent’s soaps. Therefore, they are identical.

The contested lotions for cosmetic purposes; cleansing milk for toilet purposes; facial cleanser; nail polish are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested perfumes are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested air fragrancing preparations have the same nature as the opponent’s perfumery and the intended purpose is the same in that one is designed to perfume the human body whereas the other is designed to perfume the air. Distribution channel and relevant consumer may coincide. They are therefore considered identical.

Contested goods in Class 18

A valise is a “small traveling bag or suitcase” (Oxford English Dictionary: https://en.oxforddictionaries.com/definition/us/valise on 15/11/2016). The contested valises are included in the broad category of the opponent’s traveling bags. They are therefore identical.

The contested purses; school satchels; rucksacks; shopping bags; handbags; briefcases; vanity cases, not fitted; bags for sports; bags overlap with the opponent’s goods made of leather and imitations of leather not included in other classes. The contested goods listed may be made of leather and imitation leather. Therefore, they are identical.

Contested goods in Class 25

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

The contested shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested hosiery; gloves [clothing]; scarfs; girdles are included in the broad category of the opponent’s clothing. 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 are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	MINIM
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 Romanian-speaking part of the relevant public.

The opponent’s mark is a figurative mark, composed of a verbal and a figurative element. The verbal element reads ‘minimum’ although the first ‘I’ merges with the ‘N’ that follows it, and the ‘U’ merges with the final ‘M’. The figurative element, which may be perceived by some as a stylised ‘M’ and by others as a fanciful element, precedes the verbal element.

The contested sign is the word mark ‘MINIM’.

The element ‘minimum’ of the earlier sign has the same meaning in Romanian as in English will be associated with ‘smallest or lowest’ (Oxford English Dictionary https://en.oxforddictionaries.com/definition/us/minimum on 22/11/2016). Bearing in mind that the relevant goods and services are cosmetics, bags, clothing (and similar), this element may be considered weak as it may be seen as alluding to the small size or the minimalistic nature of the goods at issue.

The letter ‘M’ as such would have a meaning in relation to goods in Class 25 as an indication of size (S, M, L, XL) but given the unusual stylisation of the figurative element, for those consumers that see an ‘M’, it is unlikely in this case that they would interpret it as an indication of the size ‘Medium’. It would rather be seen as the initial for the word ‘minimum’. However account should be taken of the fact that verbal elements in a sign tend to have more weight than figurative elements. Therefore it cannot be held that the figurative element would be attributed more trade mark significance than the verbal element in the earlier sign.

The figurative aspect including the figurative element and the merging of the letters in the verbal element is distinctive to a normal degree. No element is more dominant (visually outstanding) than another in the earlier mark.

As regards the contested sign, it is composed of the verbal element ‘MINIM’ which in Romanian is a synonym for ‘minimum’. It may be considered weak for the goods at issue for the same reason as the element ‘minimum’ given that it has the same meaning for the relevant public.

Visually, the signs coincide in the first 5 letters ‘MINIM’. However, they differ in the last two letters the earlier mark ‘UM’ and in the figurative element which has no counterpart in the contested sign. The merging of letters in the earlier mark, only apparent on a closer examination, is also absent from the contested work mark.

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 verbal element 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, the pronunciation of the signs coincides in the syllables ‘MIN-IM’, present identically in the signs. This coinciding component may be considered weak due to its possible allusion to the goods at issue. The pronunciation differs in the in the sound of the last two letters ‛UM’ of the earlier sign, which has no counterpart in the contested mark. The pronunciation of the first two syllables of the earlier mark is identical to the pronunciation of the contested mark.

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

Conceptually, the public in the relevant territory, Romania, will perceive the word element of the signs as having the same meaning given that ‘minim’ is a synonym for ‘minimum’ in Romanian.

Therefore, for those that perceive an ‘M’ in the earlier mark, the signs are conceptually similar to an average degree. For those that perceive the figurative element in the earlier sign as fanciful, and thus having no meaning, the signs are conceptually similar to an above-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.

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

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.

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).

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 higher degree of similarity between goods and services may be offset by a lesser 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 at issue are identical.

Account must also be taken of the market reality of purchasing the relevant goods in Classes 18 and 25. Generally in apparel shops customers can themselves either choose the clothes, bags and other items they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of such items is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, in the present case the visual similarities between the signs caused by the fact that the contested mark is totally included in the earlier mark and also constitutes the first verbal element of the latter, are particularly relevant when assessing the likelihood of confusion between them.

In the present case the earlier mark has a normal level of distinctiveness. The contested sign is contained in its entirety in the earlier mark and the marks are conceptually similar at least to an average degree for the relevant public that have an average degree of attention. Given also the average degree of aural and visual similarity, it can be concluded that there is likelihood of confusion on that part of the relevant public for identical goods. The verbal elements of the signs, that will be given more weight than the figurative elements, have exactly the same meaning for the Romanian-speaking public and it is considered that the figurative differences between them are not sufficient to rule out the likelihood of confusion, especially if we consider that the public must rely on its imperfect recollection of the marks.

Considering all the above, there is a likelihood of confusion on the part of the Romanian-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 5 762 828. 

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

As the earlier right European Union trade mark registration No 5 762 828 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 right 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

Lynn BURTCHAELL

Lynn BURTCHAELL

Martin EBERL

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.