OPPOSITION No B 3 049 659

El Camino Bracelets LTD, Brook House Henbrook Lane, Banbury OX15 5BA, United Kingdom (opponent)

a g a i n s t

Cervecería Popular de Cantabria S.L., Cervantes 5, bajo, 39001 Santander, Spain (applicant), represented by José Donato García Gómez, C/ La Gloria, 105, 3 E, 39012 Santander (Cantabria), Spain (professional representative).

On 18/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 659 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 658 311 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 12 817 441 for the word mark ‘El Camino’. 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.

a) The goods

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

Class 14: Ankle bracelets; bracelets [jewellery, jewelry (Am)]; charms [jewellery] of common metals; clasps for jewelry; costume jewellery; decorative articles [trinkets or jewellery] for personal use; jewellery in the form of beads; jewellery made of glass; jewellery made of plastics; necklaces; key chains as jewellery [trinkets or fobs]; jewelry boxes not of metal.

The contested goods are the following:

Class 25: Clothing; footwear; headgear.

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 opponent’s goods in Class 14 are jewellery-type accessories and parts therefor and boxes for storing such items. These goods are not sufficiently close to the contested clothing; footwear; headgear in Class 25 to render them similar, for the reasons provided below.

Although the purpose of the opponent’s goods is personal adornment (or storing personal adornments), the applicant’s goods are intended for dressing and protecting the human body. The nature of the goods differs in general. The goods under comparison are not in competition nor are they complementary, despite the fact that these goods may be worn in combination, since the opponent’s goods are not essential for the use of the applicant’s goods, and vice versa (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). Even if the goods in question may be found in the same outlets, they will not generally be placed in the same or adjacent sections. Furthermore, even though some fashion designers produce and sell fashion accessories, such as jewellery, this is not the rule, and tends to apply mainly to (commercially) successful designers. Therefore, these goods are generally manufactured by different undertakings. In the light of the aforementioned, the goods are dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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, 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

Teodora TSENOVA-PETROVA

Alicia BLAYA ALGARRA

Inés GARCÍA LLEDÓ

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.