OPPOSITION No B 3 057 139

Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Ekaterina Tankeeva, Via Thailandia 24, 00144 Roma, Italy (applicant).

On 28/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 139 is upheld for all the contested goods.

2. European Union trade mark application No 17 871 109 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 871 109 (figurative). The opposition is based on European Union trade mark registration No 13 584 941 (figurative). 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.

1. The goods

The opposition is based on, inter alia, the following goods:

Class 25: Clothing; Footwear; Headgear.

The contested goods are the following:

Class 25: Clothing; Footwear; Headgear.

The applicant argues that the parties operate in different market sectors as the applicant produces medium-high quality products whereas it is alleged that the opponent offers lower quality products. The Opposition Division notes that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against (16/06/2010, T-487/08, ‘Kremezin’, EU:T:2010:237, § 71). Therefore, this argument of the applicant has to be set aside.

The goods are identically contained in both lists of goods.

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

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘LIDER’ is meaningful in certain parts of the relevant territory, for example in those countries where Spanish, Portuguese, Romanian and Polish is spoken as it will be associated with a person who leads, is in charge of a group, country or organization. This meaning will also be grasped in other territories where a close equivalent word exists such as for the English- and French-speaking public where the word ‘LEADER’ exists. However, in other parts of the relevant territory, such as in Greece, the element ‘LIDER’ will be perceived as a fanciful word without any meaning. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

Both signs are figurative. The earlier mark is composed of the word ‘LIDL’ presented in big bold slightly fanciful upper case characters in blue and red. The letter ‘I’ is oblique. The contested sign is composed of the word ‘LIDER’ depicted in bold blue characters with the initial letter ‘L’ being bigger and thicker and the dot over letter ‘I’ is red. This verbal element is surrounded by the three semi-circular lines in green, white and red. All elements are inserted within a black square.

The verbal elements of the signs, namely ‘LIDL’ of the earlier mark and ‘LIDER’ of the contested sign are meaningless and, as such, also distinctive.

The figurative element of the contested sign and the black background will be perceived as purely decorative elements and the attentiveness of the public will be directed at the distinctive verbal element ‘LIDER’.

The signs have no elements that could be considered dominant (visually eye-catching).

Visually, the signs coincide in ‘LID’ and in the fact that both verbal elements are depicted to some extent in a similar way, namely in blue capital letters with a red dot over the letter ‘i’.

However, they differ in their endings: ‘L’ of the earlier sign and ‘ER’ of the contested one, the figurative element of the contested sign and some differences in the graphic depiction such as the specific font, the fact that the lower part of the letter ‘i’ of the earlier sign is depicted in red and the black square background present in the contested sign. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the figurative element of the contested sign will have less impact on the consumers than the verbal element ‘LIDER’.

Therefore, the signs are similar to an average degree.

Aurally, at least part of the Greek-speaking public under analysis will pronounce the earlier sign as ‘LI-DEL’. The contested sign will be pronounced as ‘LI-DER’. Therefore, for this part of the public the signs will coincide in the sound of the syllable ‛LI’, present identically in both signs and they show similarities in the second syllable as they differ only in the last sound ‘L’ versus ‘R’. For the remaining part of the public the signs coincide in the sound of the letters ‘LID’ and differ in their final sounds ‘L’ versus ‘ER’.

Therefore, the signs are either similar to an average or a high degree depending on the pronunciation of the earlier mark.

Conceptually, neither of the signs has a meaning for the public under analysis 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are identical and they target the public at large with an average degree of attention.

The signs are visually similar to an average degree and aurally either similar to an average or a high degree. The conceptual comparison is neutral. The earlier mark enjoys a normal level of distinctiveness.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. Taking into account that the visual similarity between the signs lies not only in the verbal elements but also their graphic depiction and colour combination, as well as the high aural similarity for at least part of the public under analysis, together with the absence of any conceptual differences, the signs are likely to be associated with the same commercial origin, or economically linked undertakings in relation to the identical goods at issue.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the Greek-speaking public in the relevant territory. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 584 941. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sam GYLLING

Katarzyna ZANIECKA

Kieran HENEGHAN

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.