OPPOSITION No B 3 058 781

Montblanc-Simplo GmbH, Hellgrundweg 100, 22525 Hamburg, Germany (opponent), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative)

a g a i n s t

DBL-Deutsche Berufskleider Leasing GmbH, Albert-Einstein-Str. 30, 90513 Zirndorf, Germany (applicant), represented by Kutzenberger Wolff & Partner, Waidmarkt 11, 50676 Köln, Germany (professional representative).

On 26/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 781 is partially upheld, namely for the following contested goods:

Class 25: Clothing; work clothes; protective clothing; headgear; waist belts; footwear; work footwear; work shoes; work boots.

2. European Union trade mark application No 17 870 710 is rejected for all the above goods. It may proceed for the remaining goods and the non-contested services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods (and services) of European Union trade mark application No 17 870 710 for the figurative mark , namely against all the goods in Class 25. The opposition is based on international trade mark registration No 673 109 for the word mark ‘MEISTERSTÜCK’ designating, inter alia, Italy, Portugal and France, for goods in Class 18. The opponent invoked Article 8(1)(b) EUTMR.

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 international trade mark registration No 673 109 for the word mark ‘MEISTERSTÜCK’, designating, inter alia, Italy, Portugal and France, since this one is the most similar one to the contested sign.

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 requested that the opponent submit proof of use of, inter alia, international trade mark registration No 673 109 for the word mark ‘MEISTERSTÜCK designating, inter alia, Italy, Portugal and France.

The date of filing of the contested application is 08/03/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the above mentioned countries from 08/03/2013 to 07/03/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 18: Products wholly or partly made of leather or imitations of leather not included in other classes, small leather goods not included in other classes, napkins (leather goods), briefcases, handbags, leather cases not included in other classes, travel bags, umbrellas and walking sticks, whips, harness and saddlery.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 26/04/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 01/07/2019 to submit evidence of use of the earlier trade mark. This deadline was extended until 01/09/2019. On 30/08/2019, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

Annex 1BIS: an affidavit, signed by Mr H. B., Executive Vice President Finance of the opponent, including Annexes 1, 2, 3, 4, 5, 6, 7 and 8 with some relevant information, such as: the number of relevant products sold by the opponent that amounts to a substantial number, which, for reasons of confidentiality cannot be revealed, between 01/03/2013 and 31/03/2018 under the trade mark ‘MEISTERSTÜCK’ in the relevant countries. It also contains a table mentioning the number of products sold by country and a table with the advertising and promotion costs for the trade mark ‘MEISTERSTÜCK’ in the relevant countries and during the relevant period. According to this Annex the ‘MEISTERSTÜCK’ leather products are distributed either via the 80 Montblanc Boutiques existing in the EU, or via the authorized retailers which are more than 1800, including the Duty Free points of sale. The goods that are mentioned are, inter alia, leather goods, such as pocket accessories (e.g. cardholders, passport holders, smartphone holders, coins cases, wallets, key rings), bags (e.g. briefcases, backpacks, clutches, duffles), document cases, organizers, pen pouches, etc., under the trade mark ‘MEISTERSTÜCK’.

Annex 4: copies of approximately 200 invoices, dated between 2013 and 2018, addressed to clients in Bulgaria, Croatia, the Czech Republic, France, Hungary, Italy, Latvia, Poland, Portugal, Romania, Slovakia, Slovenia and Spain with on top of the invoices the logo . In the description part appear, under the name ‘MEISTERSTÜCK’, the following goods falling in Class 18, namely: leather smartphone holder, leather pen pouch, leather wallet, leather briefcase, leather document case, leather bag, leather executive tote bag, leather selection portfolio, leather business card holder, leather key fob, leather clutch, leather soft grain smartphone case, leather billfold, leather checkbook case, leather coin case, leather currency wallet, leather wallet with view pocket, leather selection wallet, leather double briefcase, leather tote bag, leather night-flight wallet, leather passport holder, leather pocket holder, leather selection pocket, leather pen pouch clasp, money clip pocket holder, leather pen sleeve, leather pocket, leather multi credit card case, leather multi-function wallet, wallet with money clip, leather pocket, leather selection keyfob, leather travel wallet, leather soft grain wallet, leather coin case zip, leather soft grain north south bag, leather soft grain tablet computer case, leather portfolio with zip, leather soft grain hard phone case, leather soft grain envelope bag, leather backpack, leather messenger bag, leather soft grain wash bag, leather briefcase with laptop holder, leather portfolio with zip, leather soft grain document case, leather soft grain passport holder, key ring, leather soft grain travel wallet, leather night-flight reporter bag, leather trifold, leather selection smartphone holder, leather coin purse, leather organizer, leather soft grain cufflinks pouch, leather checkbook, leather soft grain clutch, leather refill calendar, leather notepad holder, leather soft grain shoulder strap, leather selection tablet computer cover with clasp, leather soft grain business companion, leather selection agenda, leather soft grain duffle, key fob loop with hook, leather soft grain backpack, leather soft grain backpack shoulder, leather conference folder, leather atelier hold-all bag.

Annex 5: copies of several trade catalogues with a page of the content and the number on which page appear the different products, together with their pricelists released in Italy, France, Portugal and Spain, and with the same catalogue in English. The documents are dated in 2013, 2014, 2015, 2016 and 2018. The trade mark ‘MEISTERSTÜCK’ appears on top, followed by the type of goods, some characteristics of these, their identification numbers and pictures of the relevant goods. The goods that are mentioned are, for example: business bags, pocket accessories, horizontal/vertical wallets without coin case, horizontal/vertical wallets with coin case, long wallets, organizers and agendas, writing instrument pouches, desk accessories, wallets with country specifics, business bags, city bags, travel bags, pocket accessories, small leather goods, shoulder straps. On the content pages the trade mark ‘MEISTERSTÜCK’ also appears, followed by all the goods that are sold under this mark.

Annex 6: a catalogue ‘Happy Holidays’, dated 2013/2014 and another catalogue ‘Presents of Character Montblanc business gifts’, dated 2013. In the former the trade mark ‘MEISTERSTÜCK’ appears several times referring to a collection/selection of articles, such as card holders, business card holders, notebook and vertical wallets, document cases, briefcases, smartphone holders, and depicts, i.a. the following . In the latter, reference is also made to the collection ‘MEISTERSTÜCK’ and depicts some goods, such as document holders, wallets, pen pouches, smartphone and tablet holders, agendas, organizers, bags, including made of canvas.

Annex 7: a large selection of publications mentioning the ‘MEISTERSTÜCK’ leather products in the Czech Republic, France and Italy, dated 2013-2018 and showing some articles, such as travelling bags, smartphone holders, passport holders. Some depictions in these publications are: .

Annex 8: a brochure entitled: ‘A feeling for what really matters: Meisterstück Leather Collection’. The brochure is in German, English, French, Italian, Portuguese and Spanish. It mentions the history of the trade mark ‘MEISTERSTÜCK’ for leather goods and its first use of the leather products since 1994. In the brochure appear some of the articles of the opponent with their characteristics and a depiction of the goods, such as: diaries, organizers, closed organizers, pocket agendas, wallets, travel wallets, checkbooks, coin holders, coin purses, key cases and valet rings, billfolds, business card holders, business card organizers, credit card cases, notebooks, memo pods, briefcases, attaché cases, portfolios, men’s bags, pen collection boxes, portfolios, laptop cases, holdalls, garment bags, toiletries bags, leather cases. Furthermore, there is some information as regards the global sales generated, which amounts to a very substantial number, which, for confidentiality reasons, cannot be revealed.

Assessment of the evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145 and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the trade mark for the relevant goods and/or services.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI/ Stratégies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate, but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31).

Taking into account the evidence in its entirety, it is considered sufficient to establish genuine use of the earlier trade mark during the relevant period in the relevant territory, which will, hereunder, be described in more detail.

As far as the affidavit is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The evidence shows that the places of use are Bulgaria, Croatia, the Czech Republic, France, Hungary, Italy, Latvia, Poland, Portugal, Romania, Slovakia, Slovenia and Spain. This can be inferred from all the addresses on the huge amount of invoices in the above mentioned countries (annex 4), the currency mentioned in these invoices, the language of the documents, such as the catalogues, brochures, price lists, publications (annexes 5, 6, 7, 8), which appear in German, English, French, Italian, Portuguese and Spanish, and from the table mentioned in the affidavit. Therefore, the places of use, inter alia Italy, Portugal and France, are sufficiently proven.

The vast majority of the evidence filed by the opponent, such as the catalogues, price lists, invoices, publications and the table mentioned in the affidavit, are dated. Therefore, in the view of the Opposition Division, the evidence of use filed by the opponent contains sufficient indications concerning the time of use, also because the opponent has submitted documents covering the whole period of 2013-2018 and the use is quite evenly spread over this period.

As regards the extent of use, the evidence, in particular the figures mentioned in the table of the affidavit, corroborated by the large amount of approximately 200 invoices (part of these, approximately 30, for the relevant countries during the whole period of 2014 to 2018), showing quite a substantial amount of sales, provides sufficient information regarding the extent of use of the mark. There are sufficient indications in the evidence in relation to the commercial volume, length of period and frequency of use.

Furthermore, the earlier mark ‘MEISTERSTÜCK’ is a word mark and it appears as such on almost all of the documents, for example in the description part of the invoices. However, on some documents, this word is used in conjunction with the word ‘MONTBLANC’ that appears for example on top of the invoices rather to indicate that this is the opponent’s company name, but sometimes these elements appear together as ‘MONTBLANC MEISTERSTÜCK’.

Nevertheless, Article 18(1), second subparagraph, point (a) EUTMR, mentions that use of the mark in a form different from the one registered still constitutes use of the trade mark, as long as it does not alter the distinctive character of the trade mark. This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50). Furthermore, additions do not per definition alter the distinctive character of a mark.

In the present case, the word ‘MEISTERSTÜCK’ plays an independent distinctive role, as it is separated from the word ‘MONTBLANC’ and often the latter appears in a different position or only the word ‘MEISTERSTÜCK’ appears on its own. If used together, the mark ‘MEISTERSTÜCK’ refers to a specific collection of products of the opponent (‘MONTBLANC’) and this is also often mentioned in the catalogues and brochures. Taken as a whole, the evidence submitted is sufficient to prove use of the mark on which the opposition is based in a form which does not substantially alter its distinctive character.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

The opponent bases its opposition on the following goods:

Class 18: Products wholly or partly made of leather or imitations of leather not included in other classes, small leather goods not included in other classes, napkins (leather goods), briefcases, handbags, leather cases not included in other classes, travel bags, umbrellas and walking sticks, whips, harness and saddlery.

In the present case, the evidence proves use only for products wholly or partly made of leather or imitations of leather not included in other classes, small leather goods not included in other classes, briefcases, handbags, leather cases not included in other classes, travel bags, since, as can be seen from the goods listed in the above mentioned annexes, there is no reference at all made to the following goods: napkins (leather goods), umbrellas and walking sticks, whips, harness and saddlery.

For the sake of clarification, the opponent also has proven use for the following goods, as will be explained more in detail below, namely products wholly or partly made of leather or imitations of leather not included in other classes, small leather goods not included in other classes, handbags, leather cases not included in other classes. The opponent has mentioned a large amount of goods, for example: leather smartphone holder, leather pen pouch, leather wallet, leather bag, leather executive tote bag, leather selection portfolio, leather business card holder, leather key fob, leather clutch, leather billfold, leather checkbook case, leather coin case, leather currency wallet, leather night-flight wallet, leather passport holder, leather pocket holder, leather multi credit card case, leather travel wallet, leather soft grain north south bag, leather soft grain tablet computer case, leather soft grain envelope bag, leather messenger bag, leather soft grain wash bag, leather night-flight reporter bag, leather organizer, leather soft grain clutch, leather refill calendar, leather notepad holder, leather soft grain shoulder strap, leather conference folder, leather atelier hold-all bag; business bags; city bags; bags, including made of canvas; men’s bags; laptop cases; garment bags; toiletries bags, etc., all goods that belong, respectively, to the broad categories of the opponent’s products wholly or partly made of leather or imitations of leather not included in other classes, small leather goods not included in other classes, handbags, leather cases not included in other classes. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and, as the goods for which use has been proven, do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark also for these broad categories in the specification.

The Opposition Division will, therefore, proceed on the basis that the use is proven for the aforementioned goods.

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.

For the sake of economy of the proceedings, the Opposition Division will examine, as already mentioned above, the earlier international trade mark, only designating the following countries: Italy, Portugal and France.

1. The goods

The goods on which the opposition is based, and for which use has been proven, are the following:

Class 18: Products wholly or partly made of leather or imitations of leather not included in other classes, small leather goods not included in other classes, briefcases, handbags, leather cases not included in other classes, travel bags.

The contested goods are the following:

Class 25: Clothing; work clothes; protective clothing; headgear; waist belts; footwear; work footwear; work shoes; work boots; protective metal members for shoes and boots.

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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 25

The contested clothing, but also the contested work clothes; protective clothing; waist belts, the latter being, either broadly speaking also a specific sort of clothing or falling under the broad category of clothing (waist belts), are similar to, for example, the opponent’s leather cases not included in other classes, as these goods coincide in distribution channels, target the same relevant public and may be manufactured by the same kind of undertakings.

The contested headgear; footwear, but also the contested work footwear; work shoes; work boots, the latter three being, broadly speaking also a specific sort of footwear, are similar to, for example, the opponent’s handbags, as these goods coincide in distribution channels, target the same relevant public and may be manufactured by the same kind of undertakings.

The contested protective metal members for shoes and boots are dissimilar to all of the opponent’s goods. These goods are provided by specialised companies and sold to the footwear industry, where these metal elements are used for the production of all kinds of shoes, while the opponent’s goods are end products. These goods have a different nature, purpose and method of use. They are not necessarily complementary, nor in competition with each other. Furthermore, they are not originating from the same undertakings, they are offered through different distribution channels and target a different relevant public.

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 similar are both directed at the public at large and to a more professional public, the latter in particular as regards the protective and work clothing and footwear.

The degree of attention varies from average to above average depending on the price, frequency of purchase, (specialised) nature and conditions of the provided goods. For example, as some of these products, such as protective clothing, may have an impact on one’s health during more dangerous working conditions, the degree of attention may be above average.

3. The signs

MEISTERSTÜCK
Earlier trade mark	Contested sign

The relevant territories are Italy, Portugal and 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 earlier mark is the word mark ‘MEISTERSTÜCK’. The protection of a word mark concerns the word as such. Therefore, in the absence of any irregular capitalisation, it is irrelevant, for the purposes of the comparison of word marks, if it is written in upper-case or lower-case letters or a combination thereof.

The contested sign is a figurative mark consisting of the word ‘meisterstück’, written in a fairly standard lower-case typeface of which the letters ‘meister’ are in bold and dark grey and the letters ‘stück’ in bold and light grey. Underneath appear the words ‘designed by dbl’, written in a much smaller, but also fairly standard, red typeface.

As regards the earlier mark and the contested sign, the word ‘MEISTERSTÜCK’ will be perceived by the vast majority of the public as a meaningless term and is normally distinctive for the relevant goods. With respect to the contested sign, the words ‘designed by dbl’ will be perceived by the vast majority of the relevant public as having (partially) a meaning. The word ‘designed’ is the past tense of the English verb to design, meaning: ‘to work out the structure or form of (something) as by making a sketch, outline, pattern, or plans’ (information extracted from Collins English Dictionary on 18/06/2020, at https://www.collinsdictionary.com/dictionary/english/design) since, it is not only often used in many languages as such (in Portuguese ‘design), but also it is very similar to the Italian equivalent ‘disegno’. The word that follows, ‘by’, is a basic English word meaning: ‘to indicate the person responsible for a creative work’ (information extracted from Collins English Dictionary on 18/06/2020, at https://www.collinsdictionary.com/dictionary/english/by). These words are, therefore, at best weak, as they only give an indication whom designed the products. They are followed by the letters ‘dbl’, which are, as a whole, meaningless. Even though the letters ‘dbl’ have no particular meaning, as they are preceded by the words ‘designed by’, these are probably perceived as being the name of the undertaking or the initials of the person who is the creator/producer/provider of the products under the name ‘meisterstück’. The letters ‘dbl’ are distinctive, but the word ‘meisterstück’ could be considered clearly more dominant (visually eye-catching), compared to these words ‘designed by dbl’, which are not only written in a very small typeface, they are placed in a more secondary position at the bottom part of the mark and they are partially at best weak (‘designed by’).

With regard to the applicant’s argument, against the opponent’s argument that the mark ‘MEISTERSTÜCK’ is considered highly distinctive per se, and also by arguing that another EUTM application for this term has been rejected for the lack of distinctiveness, the Opposition Division points out that it is true that several trade marks have been rejected. However, in the present case the earlier mark is a validly registered international trade mark registration designating several countries. Mainly in the countries where German is spoken this mark has been rejected, as can be deduced from the WIPO registration certificate and its database, but not in the countries, such as the ones that are examined here, as in these languages the mark has no meaning for the vast majority of the public, is validly registered, and is normally distinctive.

Visually, the signs are similar to the extent that they coincide in the word ‘MEISTERSTÜCK’ with the only difference that in the contested sign this word is written in a different typeface, albeit fairly standard, and in different colours, but this will anyway not take the consumer’s attention away from the words it seems to embellish. The marks differ in the words ‘designed by dbl’ in the contested sign, which are not shared by the earlier mark, being, however, less dominant and partially at best weak (designed by).

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. The fact that the whole earlier mark coincides at the beginning (on top) of the contested sign is also relevant for the comparison.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the word ‘MEISTERSTÜCK’, present identically in both signs and being the most dominant element of the contested sign. The marks differ phonetically in the sound of the words ‘designed by dbl’ of the contested sign, which are less dominant and partially at most weak and have less impact on consumers. However, these words will probably not even be pronounced by the majority of the consumers, due to their less dominant character.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The words ‘MEISTERSTÜCK’ are meaningless terms (at least for the vast majority of the public). The words ‘designed by’ of the contested sign will be understood as having the meanings as explained above, and the letters ‘dbl’ are also meaningless, while the other sign has no meaning in those territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. This conceptual difference has, however, very little impact, since it is by far the less dominant part in the contested sign and also consists of partially at most weak elements.

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. Even though the opponent mentioned the following: ‘…the term MEISTERSTÜCK has no meaning for part of the European Union and is therefore highly distinctive per se’, is not seen as an interpretation for claiming enhanced distinctiveness or reputation. Even if this was the case, the opponent did not file any evidence to prove this claim before the deadline of 21/12/2018 to substantiate the earlier mark and to submit further material to prove this.

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 territories. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 similar and partly dissimilar. The public is the public at large and a more professional public whose level of attention varies from average to above average.

The marks are visually similar to a high degree, phonetically similar to at least a high degree and the marks are conceptually not similar, however, for the reasons explained above, this difference has little impact.

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). 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).

Taking into account all the circumstances, the few differences between the verbal element in the earlier mark and the most dominant and distinctive element of the contested sign are not enough to counteract the striking similarities and to safely exclude a likelihood of confusion. The signs coincide in ‘MEISTERSTÜCK’ and, as it was said above, the beginning of the sign is more memorable by the public. It can reasonably be concluded that consumers will not be able to distinguish between the marks in dispute for the goods that are similar and will perceive them as having the same origin, even for that part of the public that pays an above average degree of attention.

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 international trade mark registration No 673 109 for the word mark ‘MEISTERSTÜCK’ designating, inter alia, Italy, Portugal and France.

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

• international trade mark registration No 1 126 053 for the word mark ‘MONTBLANC MEISTERSTÜCK’, designating the European Union, for belts in Class 25.

This other earlier right invoked by the opponent is less similar to the contested mark, since it contains the word ‘MONTBLANC’. However, it covers goods, namely belts, which are also clearly different to protective metal members for shoes and boots in the contested trade mark, for the same reasons as when comparing these with the opponent’s goods in Class 18 (see above explanation). Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods. For this reason, it is not necessary to analyse the opponent’s argument whether or not this earlier mark is subject to proof of use or not.

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

Michal KRUK

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.