OPPOSITION No B 2 673 773

Takko Holding GmbH, Alfred-Krupp-Str. 21, 48291 Telgte, Germany (opponent), represented by Löffel Abrar Rechtsanwälte PartG mbB, Schirmerstraße 80, 40211 Düsseldorf, Germany (professional representative)

a g a i n s t

Studio Ventures Ltd, 4th Floor, Fairgate House, 78 New Oxford Street, WC1A 1HB London, United Kingdom (applicant), represented by Harrison IP limited, 3 Ebor House Millfield Lane, YO26 6QY, Nether Poppleton, United Kingdom (professional representative).

On 24/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 673 773 is partially upheld, namely for the following contested goods:

Class 18: Bags, purses and pouches; rucksacks; shoulder bags; belts; card holders (wallets); key cases; laces made of leather or imitations of leather; handbags; sling bags for carrying infants.

2. European Union trade mark application No 15 017 023  is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall 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 15 017 023, ‘CHAPTER_’ (word mark), namely against all goods in Class 18. The opposition is based on European Union trade mark registration No 10 150 381, ‘CHAPTER’ (word mark).  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 and services

The goods and services on which the opposition is still based (after revocation decision No 14755 C from 06/04/2017) are the following:

Class 25: Clothing, footwear, headgear.

Class 35: Retail services in relation to precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, clothing, footwear, headgear.

The contested goods are the following:

Class 18: Bags and luggage; purses and pouches; umbrellas; parasols; attaché cases; rucksacks; garment bags; shoe bags; shopping bags; bands of leather; shoulder belts; shoulder bags; belts; walking sticks; card holders (wallets); key cases; laces made of leather or imitations of leather; vanity cases; suitcase handles; suitcases; travelling trunks; luggage straps; handbags; travelling bags; sling bags for carrying infants; wheeled bags and cases.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Clothing and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. Goods such as the contested bags, purses and pouches; rucksacks; shoulder bags; belts; card holders (wallets); key cases; laces made of leather or imitations of leather; handbags in Class 18 (contested goods) are related to articles of clothing and footwear in Class 25 (opponent’s goods). This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing and even footwear because they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered to be similar.

The contested sling bags for carrying infants are lowly similar to the opponent’s clothing, as they usually coincide in producer, relevant public and distribution channels.

On the other hand the contested luggage; garment bags; vanity cases; shoe bags; shopping bags; suitcases; travelling trunks; travelling bags; wheeled bags and cases are used for carrying things when shopping, travelling or eventually for holding or storing of different items and the contested attaché cases are flat cases used for carrying documents, paper, etc. Hence, all these goods do not satisfy the same needs as the opponent’s clothing, footwear or headgear. They have different nature and serve different purposes. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the aforementioned goods and the opponent’s goods are neither in competition nor complementary. Therefore, these goods are considered dissimilar.

Furthermore, the contested umbrellas; parasols; bands of leather; shoulder belts; walking sticks; suitcase handles; luggage straps have very different natures from that of clothing, headgear and footwear in Class 25. Furthermore, they serve different purposes (protection from rain/sun, assistance with walking versus covering/protecting the human body). They do not usually have the same retail outlets and they are usually not made by the same manufacturers. Furthermore they do not target the same public. These goods are considered dissimilar.

Those goods are furthermore dissimilar to the opponent’s retail services in Class 35.

In general services and goods are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services, internet shopping, mail order services.

However, as the above mentioned goods are not identical to the opponent’s goods being retailed in Class 35, but dissimilar, they are also dissimilar to the opponent’s retail services in Class 35.

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

c) The signs

CHAPTER	CHAPTER_
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.

The verbal components of the signs under comparison are meaningful for the English-speaking part of the public in the relevant territory. To take into account the semantic content of the common element ‘CHAPTER’ in the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public, such as consumers in the United Kingdom, Ireland and Malta.

The earlier mark is a word mark consisting of the word ‘CHAPTER’. A chapter can refer to a main division of a book, typically with a number or title or a distinctive period in history or in a person's life (see https://www.collinsdictionary.com/dictionary/english/chapter). The contested sign consists of the identical word ‘CHAPTER’ plus an underscore after the last letter ‘R’. The underscore does not change the meaning of the word chapter. The English speaking public is not likely to see any meaning in the signs with respect to the good found to be similar to various degrees, and therefore the signs dispose of a normal distinctiveness.

Visually and aurally, the two word marks coincide in the word ‘CHAPTER’. However, the signs differ at their ending, where the contested sign ends with an underscore.

Therefore, the signs are visually highly similar. Aurally they will be identically pronounced. Even if the public notes the underscore, it will not be pronounced. Therefore there exists even an aural identity of the signs due to the identical verbal element.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the expressions. The underscore included in the contested sign does not change the meaning of the word chapter there and is therefore unable to establish any significant conceptual distance between the signs. Hence the signs are conceptually highly similar if not identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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, as already stated in section c), 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.

e) Global assessment, other arguments and conclusion

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).

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).

The goods at issue are partly similar (to various degrees) and partly dissimilar. The signs are visually highly similar, and aurally and conceptually identical respectively almost identical due to the fact that the earlier mark is reproduced in its entirety in the contested sign to which an additional underscore is added.

Considering all the above, there is a likelihood of confusion on the part of the English-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, and contrary to the applicants view, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No. 10 150 381. It follows that the contested trade mark must be rejected for the goods found to be similar to various degrees.

The rest of the contested goods are dissimilar. As similarity of goods and services is

a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Renata COTTRELL

Karin KLÜPFEL

Peter QUAY

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.