OPPOSITION No B 2 993 866

El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Zoe Karssen B.V., Rozengracht 133 A, 1016 LV Amsterdam, Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, Netherlands (professional representative).

On 23/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 993 866 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 062 712 ‘JAPANTHER’ (word). The opposition is based on Spanish trade mark registrations No 300 031(1) ‘PANTHER’ (word) and No 904 697(6) . 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 Spanish trade mark registrations No 300 031(1).

1. The goods and services

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

Class 25: Tights, socks, leggings.

The contested goods and services are the following:

Class 18: Leather and imitation leather; animal skins and hides; traveling trunks and totebags; umbrellas and parasol; walking sticks; whips, harness and saddlery; collars, leads and clothing for animals; lashes; casual bags; backpacks; garment carriers; wallets; purses; cases; beauty cases.

Class 25: Clothing, footwear, headgear; belts [clothing]; shawls; underwear; lingerie.

Class 35: Advertising; business management; business administration; office functions; publicity and sales promotion; public relations services; business management of performing artists; arranging and conducting of promotional events and activities, including openings, demonstrations and product presentations; arranging and conducting publicity and advertising events; commercial management; publication of publicity texts; demonstration of goods; marketing services; merchandising; import, export, retailing and wholesaling relating to gold, diamonds, jewellery, horological instruments, cosmetics, lotions, creams, make-up, deodorants, perfume; eau de cologne, shampoos, spectacles and sunglasses, paper and cardboard, photographs, posters, cards, printed matter, leather and imitations of leather, bags, suitcases, wallets, purses, cases, vanity cases, not fitted, straps, clothing, footwear, headgear, belts (clothing), scarves, underwear, lingerie, and the bringing together (for others) of the aforesaid goods (except the transport thereof), enabling customers to conveniently view and purchase those goods; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

Some of the contested goods and services are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are partly directed at the public at large (e.g. goods in Class 25) and partly at business customers with specific professional knowledge or expertise (e.g. advertising; business management; business administration)

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

PANTHER	JAPANTHER
Earlier Spanish trade mark No 300 031(1)	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).

Both marks are word marks. Therefore, contrary to what the opponent claims, they do not have elements that could be considered dominant (visually eye-catching).

The earlier mark consists of the word ‘PANTHER’. This word could evoke the Spanish word pantera (meaning a large wild animal that belongs to the cat family) but, because of its unusual spelling, only in relation to some minor part of the relevant public. The word is distinctive for the goods at hand.

The contested sign contains the word ‘JAPANTHER’ which is meaningless in the relevant territory and considered distinctive for the goods and services at hand. Contrary to what the opponent claims, it is unlikely that the relevant public will break the contested mark down artificially into separate elements ‘JA’ and ‘PANTHER’. This is because the marks cannot be arbitrarily dissected. Indeed, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Nevertheless, it is true that, in certain circumstances, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

However, in the present case, there is no reason to believe that the relevant public would dissect the contested mark and perceive the word ‘PANTHER’ as a separate identifiable element. Firstly, although the element ‘PANTHER’, on its own, as in the earlier sign, may evoke the meaning of a large wild animal that belongs to the cat family, in relation to some minor part of the relevant public, it is not an exact spelling of the word in Spanish language and therefore its identification within the word ‘JAPANTHER’ does not become so obvious, in particular as the preceding element ‘JA’ lacks any meaning. Secondly, as already explained, the word ‘PANTHER’ does not visually dominate the overall impression of the contested sign. It is not visually outstanding to catch immediately the attention of the consumers; it only forms indissoluble part of the word ‘JAPANTHER’. On the contrary, the element ‘PANTHER’ is placed at the end of the contested sign where consumers pay less attention. The sign itself is not even visually broken down into ‘JA’ and ‘PANTHER’ (e.g. through the use of a space, hyphen or other punctuation mark). As such the element ‘PANTHER’ does not play an independent distinctive role in the overall impression of the contested sign where it could be easily identified as a separate element.

Thus, visually and aurally, the signs are similar to the extent that they coincide in ‘PANTHER’. However, the similarity resulting from the overlap in those letters/sounds is diminished by the fact that the word ‘PANTHER’ does not play an independent role in the contested sign and it is very unlikely that it will be recognised at all in the contested sign for the reasons explained above. The signs have different length, intonation and rhythm. Importantly, the differentiating letters ‘JA’ appear at the beginning of the contested sign and attract more of the consumers’ attention. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the difference at the beginnings of the signs is of particular relevance. All in all, the differences are clearly perceptible and will not escape the attention of consumers and significantly weaken the visual and aural similarity resulting from the incidental overlap in the letter sequence ‘PANTHER’.

Therefore, the signs are visually and aurally similar only to a low degree.

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

Even if some minor part of the relevant public perceive the meaning of a large wild animal that belongs to the cat family in the word ‘PANTHER’ of the earlier sign, this element is not identifiable in the contested sign as explained above, and thus the signs are conceptually not similar for this part of the relevant public.

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 claims that El Corte Inglés is a well-known and reputed group of undertakings in Spain and the importance of the opponent is transmitted to its marks 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.

The opponent claims that the word ‘PANTHER’ has a ‘special’ distinctiveness and attraction associated to power and energy. However, it should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness.

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

It has been assumed in previous sections of this decision that the goods and services in question are identical. It has also been concluded that the signs under comparison have some visual and aural similarities, albeit there are also significant visual and aural differences between the marks. The earlier mark has normal distinctiveness.

The marks coincide in the letters and sounds ‘PANTHER’. However, notwithstanding the reproduction of the letter sequence of the earlier mark in the contested sign, the consumer is unlikely to identify the earlier mark ‘PANTHER’ in the contested mark. The earlier mark forms only a part of the indissoluble word ‘JAPANTHER’ and does not visually play an independent distinctive or dominant role in the overall impression of the contested mark, particularly as it is not separated visually by, for example, a space, or a hyphen. To find otherwise would require artificially dissecting the mark in a manner that does not comport with settled trade mark law and practice, whereby the consumer normally perceives a sign as a whole and does not proceed to analyse its various details.

Thus, even if all the letters of the earlier mark are incorporated in the same order in the contested sign, which confers a certain degree of visual and aural similarity on the signs, they are not in the same position, given that the contested sign contains the additional letter combination ‘JA’ at its beginning. Because of these additional letters/sounds the marks differ in their visual and aural length. Furthermore, the differing letters and sounds ‘JA’ appear in the initial part of the contested mark and, therefore, will be readily noticed by the relevant public. As seen above, the opponent did not prove that its earlier mark enjoys a higher than average degree of distinctiveness on account of its extensive use on the market. Under the principle of interdependence the low degree of similarity of the marks would require some degree of enhanced distinctiveness, even for identical goods. Otherwise there would be no room for the factor of enhanced distinctiveness. There can be no automatism for finding a likelihood of confusion in instances where the similarity is only low (26/09/2018, R 2284/2017-2, Reeflowers (fig.) / flower (fig.) § 57).

Consequently, it is unlikely that the relevant consumer would confuse the marks and consider that the goods and services in question, bearing their marks, come from the same or economically-linked undertakings.

The opponent has also based its opposition on the Spanish earlier trade mark No 904 697(6) protected for bags and sport bags; travelling articles, suitcases, briefcases and leather articles in general in Class 18.

However, this earlier mark is even less similar (if not dissimilar) to the contested mark than the earlier Spanish mark No 300 031(1) compared above. This is because the mark is a composite mark, containing an image of a large black feline positioned in front of other lined elements, the first of which may be seen as a stylized letter ‘P’ and the last element as a letter ‘R’. And although the opponent submits that the word behind the figurative element reads as ‘PANTHER’, it t is not possible to decipher this element without a meticulous examination of the sign, while it should be noted that an average consumer normally perceives a sign as a whole and does not proceed to analyse its various details.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. 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.

The Opposition Division

Begoña URIARTE VALIENTE

Anna BAKALARZ

Jorge ZARAGOZA GÓMEZ

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.