OPPOSITION No B 2 662 453

CBR Textile GmbH, Hunäusstr. 5, 29227 Celle, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft MBB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

Silken Favours Limited, Studio 1a Enterprise House 2 Tudor Grove, London E9 7QL, United Kingdom (applicant), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative)

On 27/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 662 453 is upheld for all the contested goods.

2. European Union trade mark application No 14 787 204 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all of the goods of European Union trade mark application No 14 787 204. The opposition is based on, inter alia, German trade mark registration No 302 012 036 499. 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 German trade mark registration No 302 012 036 499.

1. The goods and services

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

Class 3: Perfumery, essential oils, cosmetics and personal care preparations, in particular cosmetic articles, including lipstick, eye make-up, eye crayon, make-up, rouge (cosmetics), hair tonics; soaps; dentifrices.

Class 9: Sunglasses; spectacles; cases for sunglasses and spectacles; cash registers; CDs and DVDs.

Class 16: Stationery, writing and drawing implements; stationery-type portfolios; paper and paper articles (included in this class), printed matters; adhesive labels, stickers (paper goods); photographs; photograph stands; plastic materials for packaging.

Class 18: Handbags, shopping bags.

Class 24: Textiles and textile goods (included in this class), in particular fabrics for curtains and roller blinds; household linen, table linen and bed linen; bed spreads and table cloths.

Class 25: Clothing, headgear, footwear; clothing accessories, namely belts, sleeve garters, neckerchiefs, gloves, neckties and ascots, suspenders, scarves, stockings, socks, head bands; pockets for clothing; all the aforesaid goods except tailor made designer goods.

Class 26: Zip fasteners.

Class 35: Advertising; business management; business administration; office functions; wholesale and retail services for the following goods; perfumery, essential oils, cosmetics and personal care preparations, in particular cosmetic articles, including lipstick, eye make-up, eye crayon, make-up, rouge, hair tonics, soaps, dentifrices, sunglasses, spectacles, cases for sunglasses and spectacles, cash registers, CDs and DVDs, jewellery, custom jewellery, cufflinks, tie pins, pins and brooches, clocks and watches, cases for clocks and watches, watch straps, key fobs, stationery, writing and drawing implements, stationery-type portfolios, paper and paper articles, printed matter, adhesive labels, stickers (paper goods), photograph stands, plastic materials for packaging, handbags, shopping bags, textiles and textile goods, in particular fabrics for curtains and roller blinds; household linen, table linen and bed linen; bed spreads and table cloths, clothing, headgear, footwear, accessories for clothing, namely belts, sleeve garters, neckerchiefs, gloves, neckties and ascots, suspenders, scarves, stockings, socks, head bands, pockets for clothing, zip fasteners; business management consultancy, shop window dressing, writing and publication of publicity texts, management assistance for trading companies, marketing.

The contested goods are the following:

Class 20: Furniture and furnishings; pillows; cushions; bedding; mattresses.

Class 24: Textiles not included in other classes; fabrics; textile fabrics; textile fabrics for the manufacture of clothing; bed linen; handkerchiefs; towels; fabric curtains; furnishing fabrics; silk fabrics; household linens.

Class 25: Clothing; footwear; headgear; scarves; silk scarves; head scarves.

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.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods shows that the relationship of individual goods and services with a broader category is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 20

The opponent’s household linen, table linen, bed linen and bed spreads which include for example, table cloths, sheets, pillowcases, duvet covers are complementary goods to the contested furniture and furnishings; pillows; cushions; bedding; mattresses. Despite their different nature, these goods target the same public, are often sold together in the same specialized furniture and bedding shops and thus follow the same distribution channels. Moreover, it is nowadays not uncommon that producers of furniture and bedding in general also manufacture the earlier goods. Therefore, it is considered that these goods are similar.

Contested goods in Class 24

All the contested textiles not included in other classes; fabrics; textile fabrics; textile fabrics for the manufacture of clothing; bed linen; handkerchiefs; towels; fabric curtains; furnishing fabrics; silk fabrics; household linens are included in the opponent’s broad category of textiles and textile goods based on their natural meaning. Therefore, these goods are identical.

Contested goods in Class 25

The contested clothing; headgear; include, as a broader category, the opponent’s belts, sleeve garters, neckerchiefs, gloves, neckties and ascots, suspenders, scarves, stockings, socks, head bands all the aforesaid goods except tailor made designer goods. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested scarves; silk scarves; head scarves are identically reproduced in both lists and the opponent’s scarves include the contested silk scarves and headscarves. Therefore, these goods are also identical.

The contested category of footwear is of a very similar nature as the opponent’s items of clothing, like gloves, neckties and scarves. They serve the same purpose since they are used to cover and protect various parts of the human body against the elements. They are also articles of fashion and are often found in the same retail outlets. Consumers, when seeking to purchase these items, will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items. Therefore, these goods are similar to each other.

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 or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

FAVORS!	SILKEN FAVOURS
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Both marks are word marks. The earlier sign consists of the word ‘FAVORS’ followed by an exclamation mark. It is possible that a small part of the German public with an extensive knowledge of English will recognizes ‘FAVORS’ as the English word meaning “an act of kindness beyond what is due or usual”. For the majority, however, the word is meaningless and enjoys an average degree of distinctiveness in relation to the relevant goods.

The contested mark consists of two word elements. The element ‘SILKEN’ will be recognized as an adjective by the German public and understood that the applicant’s goods are made of ‘silk’ (information extracted from http://www.duden.de/suchen/englisch/silken used on 20/03/2017). Therefore, this element merely describes the characteristics of the relevant goods due to which it is weak. The element ‘FAVOURS’ which will be – as described before – not recognized and understood by the largest part of the German public. Therefore, the word ‘FAVOURS’ is the most distinctive element of the contested sign.

Visually, the signs coincide in six letters ‘FAVO*RS’ which make up the entire earlier mark. They differ in the element ‘SILKEN’ and the letter ‘U’ of the contested sign and the exclamation mark of the earlier mark. However, considering that the word ‘FAVORS’ is the only element of the earlier mark, these differences cannot counterbalance the visual similarity resulting from the coinciding letters.

Moreover, it should be noted that the differing letter ‘U’ in the element ‘FAVOURS’ of the contested sign is hardly noticeable, taking into account that consumers do not read each individual letter but perceive words as a whole.

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

Aurally, the pronunciation of the signs coincides in the letters ‘F-A-V-O-R-S’ present identically in both signs and to that extent the signs are aurally similar, also taking into account that the difference in pronunciation of ‘FAVORS’ and ‘FAVOURS’ is hardly perceptible. The pronunciation differs in the verbal element ‘SILKEN’ of the contested sign, which has no counterpart in the earlier mark. The exclamation mark of the earlier mark is not itself pronounced, and it does not alter the pronunciation of the elements preceding it (i.e. vowels and consonants). However, it is used to add emphasis to the elements preceding it (e.g. indicating strong feelings or high volume). As stated above, the word ‘SILKEN’ in the contested sign is weak in relation to the goods in question.

Therefore, the marks are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for most of 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 (recital 8 of the EUTMR). 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).

In the present case, the conflicting goods are identical or similar and the degree of attention paid by the relevant public is average. The marks are visually similar to an average degree and highly similar on an aural level.

Under these circumstances, the differences between the signs, resulting from the verbal element ‘SILKEN’, – although it appears at the beginning of the contested sign, which is the part of a sign to which more attention is generally paid, as argued by the applicant – the letter ‘U’ and the exclamation mark of the earlier mark, are not sufficient to counteract the strong similarities also taking into account that the differentiating element ‘SILKEN’ is weak.

The relevant consumers may think that the relevant goods come from the same company or from economically related companies and that the contested sign is a sub-brand of goods connected to the earlier mark. It should also be recalled that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Moreover, account should also be taken of the normal degree of distinctiveness of the earlier mark.

The applicant refers to previous decisions of the Office to support its arguments. 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. However, the previous cases referred to by the applicant are not relevant to the present proceedings, because in those cases the relevant territories were different and thus the perceptions and understanding of the relevant public is neither the same.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 012 036 499. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right 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

Erkki MÜNTER

Cynthia DEN DEKKER

Loreto URRACA LUQUE

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.