OPPOSITION No B 3 018 770

Mohamed Faisal Thani Al-Thani, Salwa Street, Doha, Qatar (opponent), represented by Modiano Josif Pisanty & Staub Ltd., Thierschstr. 11, 80538 München, Germany (professional representative)

a g a i n s t

Tamina Shipping AB, Lagmansgatan 15, 45152 Uddevalla, Sweden (applicant).

On 14/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 018 770 is partially upheld, namely for the following contested goods:

Class 25: Socks; socks and stockings; shoes; hats; clothing; underwear; cuffs.

2. European Union trade mark application No 17 395 005 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 all the goods of European Union trade mark application No 17 395 005 for the word mark ‘Tamina Collection. The opposition is based on, inter alia, Italian trade mark registration No 810 607 for the figurative 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.

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 Italian trade mark registration No 810 607 for the figurative mark

1. The goods

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 14: Jewellery; bracelets; wristwatches; bracelet charms; bracelets [jewellery]; clocks and watches, electric; mechanical watches; automatic watches; silver-plated bracelets; ankle bracelets.

Class 25: Socks; socks and stockings; shoes; hats; clothing; underwear; cuffs.

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.

Contested goods in Class 14

When comparing the contested goods in Class 14, which mainly include goods in precious metals and, in general jewellery, clocks and watches, with the opponent’s goods in Class 18, which mainly include leather, leather imitations, travel goods and saddlery, and in Class 25, clothing, footwear, headgear, they are dissimilar. They have a different nature and purpose. These goods are not complementary neither in competition. They also differ in distribution channels, target a different consumer and they are normally manufactured by different kinds of undertakings.

Contested goods in Class 25

The contested clothing is identically contained in both lists of goods.

The contested shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested socks; socks and stockings; underwear; cuffs are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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 average.

3. The signs

	Tamina Collection
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 composed of the word ‘TAMIMA’, written in a fairly standard typeface in capital letters, followed by a figurative element in the form of an animal skin with the letter ‘t’ inside and on the right side a non-further-identifiable element in the form of some lines. The contested sign is a word mark composed of the words ‘Tamina Collection’. This means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate (31/01/2013, T-66/11, ‘Babilu’, EU:T:2013:48, § 57).

The word ‘TAMIMA’ of the earlier mark will be perceived as a meaningless word and the letter ‘t’ inside of the animal skin will be perceived as referring to the first letter of this word and/or to that of the single letter ‘T’, but both elements are normally distinctive for the relevant goods. The figurative element in the form of an animal skin is non-distinctive for the relevant goods in Class 25, since it indicates that they are made from leather. Furthermore, the figurative element in the form of a frame is not such an uncommon element and is more of a purely decorative nature. The public will not pay as much attention to this weak element either.

The earlier mark has no element which could be considered clearly more dominant (visually eye-catching). It is considered that all the elements have more or less a comparable visual impact and that neither of the elements can be held clearly more dominant than the others.

With respect to the contested sign, the word ‘Tamina’ is also meaningless for the Italian public and is distinctive for the goods at stake. The word ‘Collection’ is perceived as meaning: ‘a number of things collected or assembled together; a selection of clothes, especially as presented by a particular designer for a specified season’ (see Collins English Dictionary online), since this word is very similar to the equivalent Italian word ‘collezione’. This word is, however, non-distinctive for the relevant goods, as it refers to the collection of clothing, footwear, headgear of ‘Tamina’.

Visually, the signs are similar to the extent that they coincide in the letters ’T-A-M-I-*-A’, with the only difference the typeface in which these letters are written in the earlier mark, but this typeface is anyway fairly standard. The marks differ in the fifth letters ‘M’ versus ‘N’ (these letters are also visually quite similar), in the additional term ‘Collection’ of the contested sign, which is non-distinctive, and in the remaining elements of the earlier mark of which the figurative element representing an animal skin is also non-distinctive, in the letter ‘t’ inside of the animal skin, in the further non-identifiable element at the end of the earlier mark and the rectangular frame, which is purely decorative.

Therefore, taking all the aforementioned into account and also the distinctiveness issues, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /T-A-M-I-*-A/, present identically in both signs. The pronunciation differs in the sound of the letter ‛M’ (a bilabial nasal) of the earlier mark versus ‘N’ (an alveolar nasal) of the contested sign, which are anyway quite similar in their pronunciation. The pronunciation differs in the sound of the word ‘Collection’ of the contested sign, being non-distinctive. The Opposition Division is of the opinion that the sole letter ‘t’, placed inside of the animal skin in the earlier mark will not be pronounced by the majority of the consumers.

Therefore, taking all the aforementioned into account and also the distinctiveness issues, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks; the words ‘TAMIMA’ and ‘TAMINA’ of the signs have no meaning for the public in the relevant territory. The figurative element in the form of an animal skin of the earlier mark refers to this concept, as well as the word ‘Collection’ also refers to the concept as pointed out above. Even though these elements refer to some different concepts, as they are non-distinctive, they cannot indicate the commercial origin. The letter ‘T’ inside of the animal skin has the concept of that single letter. As one of the marks has a meaning, while the other is meaningless, the marks 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 some non‑distinctive elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found to be partly identical and partly dissimilar. The relevant public is the public at large whose level of attention is average. The earlier mark, as a whole, has a normal degree of distinctiveness.

The marks have been found visually similar to an average degree, aurally similar to a high degree, whereas from a semantic perspective the marks are not similar.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration No 810 607.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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.

The opponent has also based its opposition on the following earlier trade mark:

• Italian trade mark registration No 1 423 813 for the figurative mark for footwear in general in Class 25.

Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Saida CRABBE

Chantal VAN RIEL

Richard BIANCHI

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.