OPPOSITION No B 2 922 857

Feel Four, S.L., Calle Camelias 23, 08024 Barcelona, Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Leineweber GmbH & Co. KG, Wittekindstr. 16-18, 32051 Herford, Germany (applicant), represented by Ruttensperger Lachnit Trossin Gomoll Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Arnulfstrasse 58, 80335 München, Germany (professional representative).

On 01/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 922 857 is upheld for all the contested goods.

2. European Union trade mark application No 16 741 803 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 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 16 741 803 for the word mark ‘FEEL’. The opposition is based on Spanish trade mark registration No 2 784 338 for the figurative mark . 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 has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 (except orthopaedic), headgear.

The contested goods are the following:

Class 25: Clothing; footwear; headgear.

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

The contested footwear includes, as a broader category, the opponent’s footwear (except orthopaedic). Since the Opposition Division cannot dissect ex officio the broader category of the contested footwear, these goods are considered identical to the opponent’s footwear (except orthopaedic).

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 considered average.

3. The signs

	FEEL
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative mark, consisting of the verbal element ‘feel’ depicted in slightly stylised and underlined black letters followed by the numeral ‘4’ in a light reddish colour, bordered in black. Bearing in mind that the relevant goods are clothing, footwear, headgear, the numeral ‘4’ is likely to be understood as an indication of size (see, for example, 12/05/2009, R 72/2009-2, 15; 23/09/2015, R 553/2015-4, 60), or even as referring to the age of the target user (e.g. clothing meant for children aged 4 years). Therefore, this element is considered non-distinctive.

The contested sign is a word mark, consisting of the element ‘FEEL’.

In the present case, the coinciding verbal element of the signs, ‘feel’, has no meaning for the relevant public and it is, therefore, distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the distinctive verbal element ‘FEEL’. They differ in the numeral ‘4’ (found to be non-distinctive) and the stylisation and colours of the earlier mark.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛FEEL’, present identically in both signs. The pronunciation of the marks differs in the sound of the numeral ‛4’ of the earlier sign, which has no counterpart in the contested mark. Reference is made to the conclusions reached above regarding the distinctiveness of the elements of the signs.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the numeral ‘4’ in the earlier mark as explained above, the other sign has no meaning in that territory. 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 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 non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods are identical. The relevant consumers are the public at large and their degree of attention is considered average. The earlier mark is inherently distinctive to a normal degree and the signs are visually and aurally similar to a high degree. The differing numeral ‘4’ of the earlier mark cannot, on its own, serve as a badge of origin, as it refers to characteristics of the relevant goods (or the end user), as explained above.

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).

Furthermore, generally in clothes shops customers can themselves either choose the clothes 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 of clothing 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 high degree of visual similarity between the signs is particularly relevant when assessing the likelihood of confusion between them.

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.

In the light of the foregoing, the degree of similarity between the marks is sufficient to consider that a substantial part of the relevant public could reasonably believe that the goods found to be identical originate from the same undertaking or economically linked undertakings.

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 Spanish trade mark registration No 2 784 338. 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

Maria SLAVOVA

Mads Bjørn Georg JENSEN

Irina SOTIROVA

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.