OPPOSITION No B 2 633 884

Diesel S.P.A., Via dell’Industria 4-6, 36042 Breganze (VI), Italy (opponent), represented by Barzanò & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

The Tshirt Factory Europe Limited, Hayre Building, Ulverscroft Road, Leicester, Leicestershire LE4 6BY, United Kingdom (applicant), represented by Axis IP Services Ltd, Peter House, Oxford Street, Manchester M1 5AN, United Kingdom (professional representative).

On 09/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 002633884 is upheld for all the contested goods, namely:

Class 25: Clothing; footwear; headgear.

2. European Union trade mark application No 14 628 804 is rejected for all the contested goods. It may proceed for the remaining goods.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 628 804, , namely against all the goods in Class 25. The opposition is based on Italian trade mark registration No 1 599 770 ‘JOGGJEANS’, for goods in Class 25. 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.

1. The goods

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

Class 25: Clothing; footwear; headgear.

The contested goods are the following:

Class 25: Clothing; footwear; headgear.

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

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.

The degree of attention is average.

3. The signs

JOGGJEANS
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 word mark composed of the verbal element ‘JOGGJEANS’. As regards the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the earlier mark will be spilt into ‘JOGG’ and ‘JEANS’.

The contested mark is a figurative mark composed of the verbal element ‘JOG’ or the letters ‘J’, ‘O’ and ‘G’ and the verbal elements ‘ON’ and LONDON’ in upper case letters within two crossing diagonal lines; the element ‘LONDON’ is in smaller letters below the lines.

The opponent argued that the elements ‘JOGG’ of the earlier mark and ‘JOG’ of the contested mark will be associated with jogging, but it did not submit any evidence in support of this, except a definition from a dictionary of the word ‘jogging’. Therefore, the Opposition Division considers that the elements ‘JOGG’ of the earlier mark and ‘JOG’ or the letters ‘J’, ‘O’ and ‘G’ of the contested mark have no meaning for the relevant public and are, therefore, distinctive.

The element ‘JEANS’ of the earlier sign will be perceived as ‘a blue robust burlap once used mainly for clothes for hard work and in common use today for trousers, shirts and similar goods’ (information extracted from Trecanni Dizionario on 19/03/2018 at http://www.treccani.it/vocabolario/jeans). Bearing in mind that the relevant goods are related to clothing and footwear, this element is weak for these goods, since it describes the material used to manufacture them; this includes footwear, as it is not excluded that footwear could be made from this material.

The element ‘ON’ of the contested mark has no meaning for the relevant public and is, therefore, distinctive.

The relevant public may recognise the element ‘LONDON’ of the contested mark as the English equivalent of the Italian ‘Londra’ and associate it with the capital of the United Kingdom. It will be perceived as a geographical indication indicating the origin of the relevant goods and, therefore, this element is weak for all the goods.

The contested sign is composed of the distinctive verbal elements ‘JOG’ and ‘ON’, the weak verbal element, ‘LONDON’, and a less distinctive figurative element consisting of two diagonal lines, which is purely decorative. Therefore, the verbal elements ‘JOG’ and ‘ON’ are more distinctive than the other elements, including the figurative element.

The letters ‘J’, ‘O’ and ‘G’ or the verbal element ‘JOG’ (if the letters are perceived together) and the verbal element ‘ON’ of the contested sign are the dominant elements, as they are the most eye-catching.

Visually, the signs coincide in the letters ‘JOG’ at the beginnings of the marks. However, they differ in the second letter ‘G’ and the additional verbal element ‘JEANS’ of the earlier mark (which is weak for some of the goods), as well as in the additional elements ‘ON’ and ‘LONDON’ (which is weak for all the goods) and the figurative element of the contested mark (which is purely decorative).

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.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the letters ‛JOG(G)’, present identically in both signs. The pronunciation differs in the sound of the additional verbal elements ‘JEANS’ of the earlier mark (which is weak for some of the goods) and ‘ON’ and ‘LONDON’ (which is weak for all the goods) of the contested mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, the signs are conceptually not similar.

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

The goods are identical and target the general public.

The signs are visually similar to a low degree and aurally similar to an average degree, as they have the letters ‘JOG’ in common. The coinciding letters are at the beginnings of the signs, where they are most likely to catch consumers’ attention. The element ‘JEANS’ of the earlier mark and the element ‘LONDON’ of the contested mark are weak for the relevant goods and the distinctive element ‘ON’ is in the middle of the contested mark, where it is more likely to go unnoticed.

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 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 identity between the goods offsets the low degree of visual similarity between the signs.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 Italian trade mark registration No 1 599 770. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Cristina CRESPO MOLTO

Francesca DRAGOSTIN

Biruté SATAITE-GONZALEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.