OPPOSITION No B 2 834 714

Texstar Produktions- und Beteiligungs GmbH, Wehlistr. 29, Stiege 3/3. OG, 1200 Wien, Austria (opponent), represented by Taylor Wessing, Benrather Str. 15, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

HK Lengo International Co. Limited, Unit A5, 9/F Silvercorp International Tower, 707-713 Nathan Road, Mongkok, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative).

On 25/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 834 714 is partially upheld, namely for the following contested goods:

Class 25: Clothing; ready-made clothing; outerclothing; wedding gowns; wedding dresses; hosiery; gloves; scarfs.

2. European Union trade mark application No 15 779 201 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 779 201 for the figurative trade mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 9 634 007 for the word trade mark ‘PANA’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark No 9 634 007.

In the present case, the date of filing of the contested trade mark is 25/08/2016.

Earlier trade mark No 9 634 007 was registered on 29/03/2012. Therefore, the request for proof of use is inadmissible.

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.

a) The goods

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

Class 25: Bathrobes.

The contested goods are the following:

Class 25: Clothing; ready-made clothing; outerclothing; shoes; wedding gowns; wedding dresses; hats; hosiery; gloves; Straps (Gaiter -); trouser straps; shoulder straps for clothing; bra straps; scarfs; shoe straps.

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.

The contested clothing, ready-made clothing; outerclothing; wedding gowns; wedding dresses; hosiery; gloves and scarfs are considered similar to the opponent’s bathrobes, since they can have the same producer, relevant public, distribution channels and method of use.

The opponent claims that the goods at issue are identical. However, the definition of bathrobes falls outside the normal definition of clothing. The purpose of clothing is essentially to cover the body, whereas the main purpose of bathrobes is to absorb moisture after a bath.

The contested straps (gaiter -); trouser straps; shoulder straps for clothing and bra straps are various clothing articles that usually complement other clothing articles. However, none of the contested goods complements the opponent’s bathrobes. Neither are the goods in competition, as someone who needs to buy a bathrobe would not choose any of these contested goods instead and vice versa. Although they can have the same manufacturers, relevant consumers and distribution channels, these links are not sufficient to justify a finding of similarity. Therefore, they are dissimilar.

The contested shoes and hats are dissimilar to the opponent’s bathrobes. Even though they have the same end consumers, this is not enough to justify a finding of similarity. The conflicting goods are not usually sold close to each other in the same departments of shops and rarely have the same producers. Footwear and headgear are used to cover and protect certain parts of the human body, but the purpose of bathrobes, as explained above, is different. These goods are neither in competition nor complementary.

The contested shoe straps are dissimilar to the opponent’s bathrobes. They are a component of a final product, shoes, and, therefore, the end users targeted by the contested goods are different from those targeted by the opponent’s goods, namely those working in the footwear industry and professional consumers. The opponent’s bathrobes, by contrast, are final products that target the general public. Furthermore, these goods have different natures, methods of use, intended purposes and manufacturers, and they are usually sold in different retail outlets.

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 applicant argues that the degree of attention would be higher than average, since the contested goods are ‘expensive purchases’ and ‘not purchased on a daily basis’. However, the assessment of the degree of attention is to be made on the basis of the list of goods for which registration is sought, clothing in this case, and therefore the degree of attention, contrary to the applicant’s opinion, is considered average.

c) The signs

PANA
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 earlier mark consists of the word element ‘PANA’. This word means ‘feather’ in Romanian and ‘corduroy’ in Spanish. Since in Spanish this word makes reference to a fabric, although the opponent’s goods, bathrobes, are not made of this specific material, the word could be considered weak. For Romanian speakers, the word is distinctive, as it is in the remaining countries of the relevant territory, where this word is meaningless.

The contested sign is a figurative mark consisting of the word ‘PANNA’ in bold black slightly square stylised lower case letters. This word exists in several languages of the relevant territory with different meanings, such as ‘cream’ in Italian or ‘miss’ in Polish. However, for consumers in a significant number of the remaining countries of the relevant territory this word is meaningless and therefore distinctive for the relevant goods. The figurative element is, despite the applicant’s opinion, purely decorative and, therefore, non-distinctive and has no counterpart in the earlier mark. Moreover, 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).

Since a clear concept in one of the signs may assist the public in distinguishing them, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will perceive ‘PANA’ and ‘PANNA’ as fanciful words with no meaning, for example the French- and German-speaking public, as, for them, the likelihood of confusion will be higher.

Visually, the signs coincide in the letters ‘PAN*A’ and differ only in the fourth letter of the contested sign, namely ‘N’. This differing letter in the middle is of limited visual impact, as it will not be readily perceived by the public. The signs also differ in the figurative depiction of the contested sign, although it will have little impact on the relevant public for the reasons explained above.

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

Aurally, the signs coincide in the sounds ‘PAN*A’ and differ only in the fourth letter, ‘N’, of the contested sign.

Although the difference in one letter can have some impact on the pronunciation of the contested sign, greater or lesser depending on the language of the public concerned, in this case, since the differing letter merely doubles the coinciding third letter, ‘N’, there will be no significant difference in the pronunciation of the sign, despite the applicant’s opinion. Moreover, in some parts of the relevant territories, there will not be any difference in the sound, since this double consonant will be pronounced in the same way as the single consonant.

Therefore, the signs are aurally similar to a high degree, if not identical.

Conceptually, neither of the signs has a meaning for the relevant public. 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.

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, 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

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.

The goods are partly similar and partly dissimilar, and they target the public at large. The signs are visually similar to a high degree and aurally similar to a high degree or even identical, and the marks have no meaning that could help to differentiate them. Furthermore, the earlier mark is distinctive to an average degree.

The opponent in its observations claims that the degree of similarity between the conflicting goods is higher and, to support its arguments, refers to previous decisions of the Office in which the opponent’s bathrobes are considered identical to clothing and similar to a relatively low degree to items of footwear.

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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In 05/09/2017, R 276/2017-5, AKQUAREL / AQUARELLE, footwear was considered similar to the opponent’s goods, because the earlier registration also covered leisure clothing made from textile materials for bath, and clothing is considered similar to footwear. This is different from the present case, in which the earlier mark covers only bathrobes.

In 30/09/2015, B 1 901 266, ‘N’, the Opposition Division found bathrobes to be identical to clothing. However, that decision does not reflect the Office’s current practice in relation to the definition of bathrobes as reflected in the Guidelines, according to which, as explained above, bathrobes fall outside the normal definition of clothing.

Consequently, the decisions cited are not relevant to the present proceedings and the outcome cannot be the same.

In its observations, the applicant argues that ‘the overall impression of the trademark “PANNA” is dominated by its graphical layout’. However, as explained above, the stylisation of this word element is neither elaborate nor sophisticated, at least not to such a degree that it will have much of an impact on the consumer; therefore, there are no dominant elements within that sign, and consequently the applicant’s claim must be set aside.

The difference between the signs in one letter and in the non-distinctive figurative element of the contested sign cannot offset the commonality in four out of five letters in the same position in the conflicting signs. Considering that neither of the marks conveys a concept that could assist the relevant public in differentiating the signs and considering the average degree of attention of the relevant public, a likelihood of confusion cannot be safely ruled out. 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).

This finding takes on board the principle that the visual impression of marks must be given due consideration for items of clothing because such items are usually examined visually or may be tried on before being bought.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the part of the public that will not perceive any meaning in the conflicting signs, such as French- and German-speaking consumers, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 634 007. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

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

Denitza STOYANOVA-VALCHANOVA

Sofia SACRISTAN MARTINEZ

Martin EBERL

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.