OPPOSITION No B 2 910 498

Errea' Sport S.p.A., Via G. Di Vittorio, 2/1 Frazione San Polo, 43056, Torrile, Italy (opponent), represented by Bugnion S.P.A., Largo Michele Novaro, 1/A, 43121, Parma, Italy (professional representative)

a g a i n s t

Kings & Queens ApS, Nytorv 11, 4200 Slagelse, Denmark (applicant).

On 15/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 910 498 is rejected in its entirety.

2. The opponent bears the 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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 all the goods of European Union trade mark application No 16 281 115 for the figurative mark . The opposition is based on European Union trade mark registration No 14 528 591 for the word mark ‘RA’. 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 18: Casual bags, Multipurpose sports bags, Handbags, Bags of leather and imitations of leather, Small bags, Canvas bags, Bags for balls, Haversacks, Camping, beach, travelling bags, Key wallets, Beach bags, Bumbags, Cosmetic bags sold empty, School knapsacks, Trunks [luggage], Travel baggage, Travel garment covers, Backpacks, Umbrellas, Walking sticks, Parasols, Briefcases, Leather and imitations of leather, Satchels, Business cards cases, Purses, not of precious metal, Wallets, Sport bags, Football bags, Wetsuit bags.

Class 25: Sports clothing and leisurewear for men, women and children, including sports jerseys, Undershirts, Tee-shirts, Tank tops, Sweat shirts, Pullovers, Polo-neck jerseys, Shirts, Skirts, Trousers, Trousers shorts, Bermuda shorts, Jackets [clothing], Coats, Denim jeans, Neckties, Gowns, Clothing, suits, Full tracksuits for sports teams, Training suits, Sports kits, including kits for football, five-a-side football, volleyball, rugby and basketball, Clothing for football, five-a-side football, volleyball, rugby, basketball, tennis, cycling, golf, baseball, spinning, running and exercise in general, not included in other classes, Snow suits, Belts for clothing, Belts for sports, Footwear, Footwear, Shoes for sports, including shoes for football, five-a-side football, volleyball, rugby, basketball, tennis, cycling, golf, baseball, spinning, running, gymnastics and exercise in general, not included in other classes, Ski boots, Swimshoes, Mules, Headgear, including caps and hats, Ear muffs, Head sweatbands, Hats and berets for sport in general, Bandanas [neckerchiefs], Gloves [clothing], Sashes for wear, Cuffs, Stockings, Socks, Sweat-absorbent stockings, Slippers, Pantihose, Underwear, including underpants, Brassieres, Vest tops, Boxer shorts, Boxer shorts, Thongs, Underwear, in particular for playing sport, namely legwarmers, Bermuda shorts, elasticated T-shirts, Sleepwear, Beachwear and bathing wear, including bathing suits, bathing trunks, Robes, Rainproof clothing.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers.

Class 25: Clothing, Footwear, Headgear.

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

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

Contested goods in Class 18

The contested luggage includes as a broader category the opponent’s trunks [luggage]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested bags include as a broader category the opponent’s casual bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested wallets are identically included in both lists of goods.

The contested other carriers overlap with the opponent’s bags of leather. Therefore, they are identical.

Contested goods in Class 25

The contested clothing, footwear, headgear are identically included 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 and the degree of attention is considered to be average.

3. The signs

RA
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 earlier mark is the word ‘RA’. Part of the public will perceive this word as the ancient Egyptian sun god. Since it does not describe or allude to any characteristics of the relevant goods, it is considered distinctive to an average degree. For the remaining part of the public, it has no meaning in the relevant territory and is therefore also distinctive to an average degree.

The contested sign is a figurative mark composed by a verbal element consisting in a reverse letter ‘R’ and the letter ‘A’ with a small circle above in a white thick typeface, the verbal element ‘ESTABLISHED 04’ below in a much smaller typeface, all included in a figurative black square.

The combination of the reverse letter ‘R’ and the letter ‘A’ with the circle above, as such, has no meaning in the relevant territory and is therefore distinctive. However, as argued by the opponent, it will be read as ‘RÅ’ by the majority of the consumers. Therefore, it will be understood by part of the relevant public, such as the Danish and Swedish-speaking part, as ‘raw’. For other part of the public, such as the Bulgarian-speaking part, the reverse ‘R’ is a Cyrillic letter which represents the last letter of the alphabet and is pronounced differently. In any case, the combination of the two letters is considered distinctive to an average degree for the relevant goods as it is not descriptive, allusive or otherwise weak/non-distinctive.

The verbal element ‘ESTABLISHED 04’ will be understood by the English-speaking part of the relevant public as the year of foundation of the company and is therefore weak. For the part of the public that does not understand the term, it is considered distinctive to an average degree.

As regards the dominance of the elements in the contested sign, the sequence of the reverse letter ‘R’ and the letter ‘A’ with the circle above is the dominant one due to its size and position. On account of its subordinate position and small size, the verbal element ‘ESTABLISHED 04’ has a very limited impact on the overall impression of the contested sign.

The figurative element of the contested sign, namely the black square, is a basic shape that is commonly used on labels of goods and is purely decorative. Consequently it is considered non-distinctive for the goods and its impact is limited.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin.

Considering the above, the Opposition Division will first examine the opposition in relation to the part of the public for which the term ‘ESTABLISHED 04’ indicates the year of foundation and, therefore, is weak; this is the case for example for the English-speaking part of the public, and where the words ‘RA’ and ‘ЯÅ’ are meaningless and therefore do not introduce a conceptual difference. This is the best case scenario for the opponent.

It is important to mention that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words as in the present case for the dominant and distinctive elements of the signs, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the letter ‘A’. However, they differ in the rest of the elements. Although in the same place, in the contested sign the letter ‘R’ is reversed and there is a circle above the ‘A’. The typeface used for the dominant element of the contested sign is rather stylised. Moreover, the term ‘ESTABLISHED 04’ and the figurative black square of the contested sign have no counterpart in the earlier mark. Although the latter elements will be attributed less significance, they will not be completely overlooked by the relevant public.

Therefore it is considered that the signs are visually similar only to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘A’, present identically in both signs. In line with the opponent’s arguments, in view of the Opposition Division, the majority of the public will pronounce the reverse letter ‘R’ of the contested sign as an ‘R’. The term ‘ESTABLISHED 04’ is rather a negligible element and will not be pronounced when referring to the mark aurally.

Therefore, for the part of the public that will pronounce the reverse ‘R’ as a normal ‘R’, the signs are aurally identical.

Conceptually, although the impact of the element ‘ESTABLISHED 04’ of the contested sign is limited, the public in the relevant territory will perceive the meaning in it as explained above. The other sign has no meaning for the part of the public taken into consideration. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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.

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. 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).

It has been established in the previous sections of this decision that the contested goods are identical to goods on which the opposition is based. They are directed at the public at large with an average degree of attention. The earlier mark has an average degree of distinctiveness for all the relevant goods.

It has also been concluded that the signs are visually similar only to a low degree and aurally identical. Moreover, the signs are not conceptually similar.

Generally in clothes and bags shops customers can themselves either choose the good 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 the item 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, the visual differences between the signs are particularly relevant when assessing the likelihood of confusion between them.

Moreover, the signs in dispute have two letters in their dominant elements, facilitating a better perception of all their single elements. Consequently, it is considered that the fact that they differ in the striking reversed letter ‘R’, the circle above the letter ‘A’, and the stylised typeface in the contested sign, introduces relevant visual differences that overcome the aural identity between the signs. The differences between the signs are enhanced, although with a limited impact, due to the figurative black square and the term ‘ESTABLISHED 04’, both present in the contested sign.

Considering all the above, in spite of the identity of the relevant goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘ESTABLISHED 04’ is distinctive and for which the words ‘RA’ and/or ‘RÅ’ are meaningful. This is because, as a result of the distinctive character of that element and the conceptual difference introduced, that part of the public will perceive the signs as being even less similar.

Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Begoña URIARTE VALIENTE

Jorge ZARAGOZA GOMEZ

Boyana NAYDENOVA

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.