OPPOSITION No B 3 053 817

La Halle, société anonyme, 28, avenue de Flandre, 75019 Paris, France (opponent), represented by Taoma Partners, 52 Avenue Kléber, 75116 Paris, France (professional representative)

a g a i n s t

Rongrong Ye, Via Trento 320/8, 50013 Campi Bisenzio, Italy (applicant).

On 18/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 053 817 is partially upheld, with the exception of the following goods:

Class 18: Saddlery, whips and apparel for animals; studs of leather; reins for guiding children; girths of leather; straps for skates; furniture coverings of leather; trimmings of leather for furniture; shoulder belts; shoulder belts [straps] of leather.

2. European Union trade mark application No 17 866 721 is maintained for all the above goods. It is rejected 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 17 866 721 for the word mark ‘L&H’. The opposition is based on French trade mark registration No 3 989 818 for the word mark ‘LH’. 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 18: Leather and imitations of leather; animal skins; trunks and suitcases; umbrellas, parasols and canes; wallets; purses; key-cases; handbags, rucksacks, rolling bags; mountain bags, bags for campers, travel bags, beach bags, school bags; vanity cases, not fitted; shopping nets or bags; bags or sachets (envelopes, pouches) of leather, for packaging.

Class 25: Clothing, footwear, headgear; shirts; leather or imitation leather clothing; belts [clothing]; furs [clothing]; gloves; [clothing]; scarves; neckties; hosiery; socks; slippers; beach shoes; ski boots and sports shoes; underwear.

The contested goods are the following:

Class 18: Saddlery, whips and apparel for animals; umbrellas and parasols; walking staffs; luggage, bags, wallets and other carriers; studs of leather; reins for guiding children; leatherboard; cases of leather or leatherboard; girths of leather; leather luggage straps; leather, unworked or semi-worked; straps for skates; leather straps; leather for shoes; leather for harnesses; labels of leather; leather twist; moleskin [imitation of leather]; card holders made of leather; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; casings, of leather, for springs; boxes of leather or leatherboard; boxes made of leather; imitation leather hat boxes; furniture coverings of leather; industrial packaging containers of leather; document cases of leather; leather for furniture; leather and imitations of leather; polyurethane leather; worked or semi-worked hides and other leather; animal skins; leather sold in bulk; cattle skins; trimmings of leather for furniture; imitation leather; shoulder belts; leather cloth; imitation leather sold in bulk; butts [parts of hides]; wheeled luggage; tie cases for travel; cases of imitation leather; key cases made of leather; key cases; luggage; key-cases of leather and skins; driving licence cases; carry-on bags; travel luggage; vanity cases, not fitted; trunks [luggage]; travelling trunks; kori wicker trunks; trunks and suitcases; bags; bucket bags; shoulder bags; shoe bags for travel; weekend bags; shopping bags; wheeled shopping bags; shopping bags with wheels attached; canvas shopping bags; beach bags; saddlebags; bags for sports; travel baggage; travelling handbags; travelling bags made of imitation leather; travel bags made of plastic materials; garment bags for travel made of leather; fashion handbags; drawstring bags; roller bags; flight bags; hiking bags; work bags; wrist mounted carryall bags; gym bags; cross-body bags; bags [envelopes, pouches] of leather, for packaging; children's shoulder bags; nappy bags; book bags; knitting bags; textile shopping bags; shopping bags made of skin; two-wheeled shopping bags; courier bags; towelling bags; wash bags for carrying toiletries; cosmetic bags sold empty; wash bags (not fitted); make-up bags sold empty; grocery tote bags; chain mesh purses; slouch handbags; bags for sports clothing; artificial fur bags; bags made of imitation leather; waterproof bags; knitted bags, not of precious metals; canvas bags; diplomatic bags; leather bags and wallets; flexible bags for garments; handbags; clutch bags; cosmetic purses; leather purses; multi-purpose purses; purses made of precious metal; purses; key bags; drawstring pouches; Japanese utility pouches (shingen-bukuro); hipsacks; small bags for men; gentlemen's handbags; tool bags, empty; specialty holsters adapted for carrying folding walking sticks; souvenir bags; sporrans; tool bags sold empty; roll bags; tool bags [empty] for motor cycles; empty instrument cases for use by doctors; music bags; shoe bags; charm bags (omamori-ire); compression cubes adapted for luggage; holders in the nature of cases for keys; coin holders; straps for coin purses; straps for luggage; shoulder belts [straps] of leather; school book bags; school bags; briefcases; golf bag tags of leather; conference folders; portfolio cases [briefcases]; game bags [hunting accessories]; hat boxes for travel; pouches for holding make-up, keys and other personal items; holdalls for sports clothing; overnight bags; handbags, purses and wallets; ladies' handbags; handbags made of leather; handbags made of imitations leather; travelling sets [leatherware]; evening handbags; small clutch purses; small purses; minaudieres; pouch baby carriers; slings for carrying infants; belt bags and hip bags; suitcase handles; bumbags; luggage covers; carriers for suits, shirts and dresses; carrying cases; folio cases; carrying cases for documents; credit-card holders; commutation-ticket holders; travel cases; nappy wallets; leather credit card wallets; wrist mounted purses; wrist-mounted wallets; pocket wallets; folding briefcases; wallets including card holders; card wallets [leatherware]; attache cases made of leather; garment carriers; business card cases; card cases [notecases]; credit card cases [wallets]; clutches [purses]; travelling sets; hat boxes of leather; bags for climbers; travelling bags; pouches; reusable shopping bags; kit bags; all-purpose athletic bags; haversacks; leather coin purses; purses, not of precious metal; coin purses, not of precious metal; rucksacks; school knapsacks; baby backpacks; hiking rucksacks; sling bags; sports packs; portmanteaus; suitcases; business cases; attache cases made of imitation leather; gladstone bags; suitcases with wheels; leather suitcases; motorized suitcases; small suitcases; garment bags for travel; daypacks; rucksacks on castors; straps for handbags; make-up boxes; attaché cases.

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 contested umbrellas and parasols; walking staffs; luggage, bags, wallets and other carriers; leatherboard; cases of leather or leatherboard; leather, unworked or semi-worked; leather for shoes; leather for harnesses; labels of leather; leather twist; moleskin [imitation of leather]; card holders made of leather; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; boxes of leather or leatherboard; boxes made of leather; industrial packaging containers of leather; document cases of leather; leather for furniture; leather and imitations of leather; polyurethane leather; worked or semi-worked hides and other leather; animal skins; leather sold in bulk; cattle skins; trimmings of leather for furniture; imitation leather; imitation leather sold in bulk; butts [parts of hides]; wheeled luggage; tie cases for travel; cases of imitation leather; key cases made of leather; key cases; luggage; key-cases of leather and skins; carry-on bags; travel luggage; vanity cases, not fitted; trunks [luggage]; travelling trunks; kori wicker trunks; trunks and suitcases; bags; bucket bags; shoulder bags; shoe bags for travel; weekend bags; shopping bags; wheeled shopping bags; shopping bags with wheels attached; canvas shopping bags; beach bags; saddlebags; bags for sports; travel baggage; travelling handbags; travelling bags made of imitation leather; travel bags made of plastic materials; garment bags for travel made of leather; fashion handbags; drawstring bags; roller bags; flight bags; hiking bags; work bags; wrist mounted carryall bags; gym bags; cross-body bags; bags [envelopes, pouches] of leather, for packaging; children's shoulder bags; nappy bags; book bags; knitting bags; textile shopping bags; shopping bags made of skin; two-wheeled shopping bags; courier bags; towelling bags; wash bags for carrying toiletries; cosmetic bags sold empty; wash bags (not fitted); make-up bags sold empty; grocery tote bags; chain mesh purses; slouch handbags; bags for sports clothing; artificial fur bags; bags made of imitation leather; waterproof bags; knitted bags, not of precious metals; canvas bags; diplomatic bags; leather bags and wallets; flexible bags for garments; handbags; clutch bags; cosmetic purses; leather purses; multi-purpose purses; purses made of precious metal; purses; key bags; drawstring pouches; Japanese utility pouches (shingen-bukuro); hipsacks; small bags for men; gentlemen's handbags; tool bags, empty; souvenir bags; sporrans; tool bags sold empty; roll bags; shoe bags; charm bags (omamori-ire); holders in the nature of cases for keys; coin holders; school book bags; school bags; game bags [hunting accessories]; pouches for holding make-up, keys and other personal items; holdalls for sports clothing; overnight bags; handbags, purses and wallets; ladies' handbags; handbags made of leather; handbags made of imitations leather; travelling sets [leatherware]; evening handbags; small clutch purses; small purses; minaudieres; belt bags and hip bags; bumbags; carriers for suits, shirts and dresses; carrying cases; travel cases; nappy wallets; leather credit card wallets; wrist mounted purses; wrist-mounted wallets; pocket wallets; wallets including card holders; card wallets [leatherware]; garment carriers; credit card cases [wallets]; clutches [purses]; travelling sets; bags for climbers; travelling bags; pouches; reusable shopping bags; all-purpose athletic bags; haversacks; leather coin purses; purses, not of precious metal; coin purses, not of precious metal; rucksacks; school knapsacks; baby backpacks; hiking rucksacks; sling bags; sports packs; portmanteaus; suitcases; gladstone bags; suitcases with wheels; leather suitcases; motorized suitcases; small suitcases; garment bags for travel; daypacks; rucksacks on castors; straps for handbags; make-up boxes are identical to the opponent’s goods in Class 18, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested driving licence cases; credit-card holders; commutation-ticket holders; business card cases; card cases [notecases] are highly similar to the opponent’s wallets. They may have slightly different purposes but coincide in numerous relevant criteria such as their nature, method of use or their complementarity. These goods clearly belong to one homogeneous sector of products on the market and they are produced by the same companies, target the same end users and are being sold through the same channels of distribution.

The contested briefcases; conference folders; portfolio cases [briefcases]; folio cases; carrying cases for documents; folding briefcases; attaché cases made of leather; business cases; attaché cases made of imitation leather and attaché cases are similar to the opponent’s suitcases as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested leather cloth is similar to the opponent’s clothing in Class 25 as they usually coincide in producer, relevant public and distribution channels.

The contested leather luggage straps; leather straps; compression cubes adapted for luggage; straps for luggage; luggage covers and suitcase handles are accessories and parts for travelling bags. Therefore, these goods are complementary to the opponent’s travel bags. Often the manufacturer of travel bags produces, inter alia, also covers for them. In that sense, their relevant public and distribution channels also coincide. Consequently, the compared goods are similar.

In the same line of reasoning, the contested straps for coin purses and straps for handbags are also similar to the opponent’s wallets and handbags respectively.

The contested casings, of leather, for springs; imitation leather hat boxes; specialty holsters adapted for carrying folding walking sticks; tool bags [empty] for motor cycles; empty instrument cases for use by doctors; music bags; golf bag tags of leather; hat boxes for travel; hat boxes of leather and kit bags are different kind of containers with specific functions. Therefore, the mentioned contested goods, all of which are, or could be, among others, intended for carrying a variety of items, are considered to be at least similar to the opponent’s travel bags as they may coincide in numerous relevant criteria, such as their purpose and method of use. These goods clearly belong to one homogeneous sector of products on the market and for the majority of them they are - at least - produced by the same companies, target the same end user and are being sold through the same channels of distribution.

As for the rest of the contested goods:

The contested saddlery, whips; girths of leather are instruments used for driving animals or a leather strap which is fastened firmly around the middle of a horse to keep the saddle or equipment for horses, such as saddles and harnesses. These are animal’s supplies.

The contested apparel for animals refers to clothing and complements for animals.

The contested studs of leather are metal pieces that stick out, usually for decoration.

The contested reins for guiding children are a type of safety harness for children to wear whilst out and about with parents.

The contested furniture coverings of leather; trimmings of leather for furniture are pieces of leather for furniture.

The contested shoulder belts; shoulder belts [straps] of leather and are a bandolier or other strap passing over one shoulder and under the opposite arm.  

The contested straps for skates are strips of leather, cloth, or other flexible material, used to fasten, secure, or carry something or to hold on to something, in this case, skates.

The nature of these goods is very different from that of the opponent’s goods in Classes 18 and 25. They serve very different purposes (storage, protection from rain/sun, assistance with walking; items that are worn on the human body versus aid in the control and/or riding of animals, leather for furniture, or harnesses for different purposes). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

The mere fact that the opponent’s leather may be used for the manufacture of coverings for furniture, for instance, is not sufficient in itself to conclude that the goods are similar, as their nature, purpose and relevant public are quite distinct: raw materials are intended for use in industry rather than for direct purchase by the final consumer.

The contested shoulder belts are small leather goods that do not reveal any point of similarity with the opponent’s goods in Class 18 and clothing, footwear and headgear in Class 25. In particular, they have different nature, purpose and method of use, they are not produced by the same undertakings, and they have distinct distribution channels and consumers. A competition or complementarity relationship does not exist between them either.

Furthermore, the contested apparel for animals refers to goods which are used for covering parts of the animal body. These goods are considered to be dissimilar to all the opponent’s goods which are intended to carry things (goods in Class 18) or to dress the human body (goods in Class 25). Even if clothing for pets and clothing and headgear have the same nature, the opponent’s goods are all for humans, while the contested goods are for animals. Contrary to the opponent’s opinion, the designers of clothing and headgear cannot be expected to manufacture animal apparel as well. The contested apparel for animals serves very different purposes from the opponent’s goods and has different end users. Furthermore, they do not have the same retail outlets and are not made by the same manufacturers.

In conclusion, taking into account the nature of the above contested goods and for the reasons above mentioned, these goods do not share any relevant criteria in common with the opponent’s goods. Even if there is a coincidence in one of them, it is not considered sufficient for finding of similarity with any of the opponent’s goods.

b) 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 and similar to varying degrees are mostly directed at the public at large whose degree of attention will be average. However, some goods (e.g. imitation leather) are mainly directed at business customers with specific professional knowledge or expertise, who will display a higher degree of attention in relation to those goods in view of their specialised nature.

c) The signs

LH	L&H
Earlier trade mark	Contested sign

The relevant territory is France.

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 Opposition Division notes that there is no meaning behind the letters constituting the signs, and, consequently, the letter combination ‘LH’/‘L&H’ will simply be perceived as meaningless or consisting of the abbreviations of two unknown names or words beginning with the letters ‘L’ and ‘H’. Since neither of these letters has any particular meaning, they are distinctive to an average degree in relation to the relevant goods.

As regards the contested sign, the ampersand symbol ‘&’ is used as the shorthand for the conjunction ‘and’ and is commonly used in trade (16/02/2017, R 1050/2016-1 metal&glass, § 18). This conjunction will be perceived as such by the public of the European Union territory (including France) and is considered weak.

Visually, the signs coincide in their two letters, ‘L’ and ‘H’, while they differ in the ampersand placed between those letters in the contested sign. It is acknowledged 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). In the present case, however, the fact that the signs under comparison consist of the same two letters, ‘L’ and ‘H’, and that the differing character is an ampersand (of limited impact and trade significance, as mentioned), is rather relevant, taking also into account that the average consumer normally does not have the opportunity to compare the signs side by side.

Taking the above into consideration, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the pronunciation of the letters /L/ and /H/, and differ in the pronunciation of the ampersand in the contested sign (which will most probably be pronounced as the French word ‘et’ for ‘and’). Consequently, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a particular meaning for the public in the relevant territory (other than being perceived as abbreviations). Therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) 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 (recital 11 of the EUTMR). 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).

In the present case, the goods under comparison have been found to be partly identical, partly similar to varying degrees and partly dissimilar and they target both the general and the professional public with a degree of attention ranging from average to higher than average. The earlier mark enjoys a normal degree of inherent distinctiveness.

In an overall assessment, and also taking into account that the consumer only occasionally has the opportunity to carry out a direct comparison of the various trade marks and must rely on his imperfect mental image of them, the similarities between the signs must be considered enough to counteract the differences. Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The signs have been found visually and aurally highly similar, while the conceptual aspect does not influence their comparison.

The signs in dispute are short marks (two and three characters, respectively). Generally speaking, the shorter the signs the more easily consumers perceive their differences. However, the fact that in the present case the signs coincide in the two letters that compose the earlier mark, which are also recognisable as such in the contested sign, and the only differing character in the latter sign is moreover an ampersand, is a relevant factor to consider when evaluating the likelihood of confusion between them.

In light of the above, the Opposition Division finds that the difference between the signs is not sufficient to counteract the similarity resulting from their coinciding letters, ‘L’ and ‘H’, and that there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is partially well founded on the basis of the opponent’s earlier French trade mark registration No 3 989 818. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of 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.

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

Alicia BLAYA ALGARRA

Alexandra APOSTOLAKIS

Marta GARCIA COLLADO

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.