OPPOSITION No B 3 061 818

‘Dr. Martens’ International Trading GmbH, Ahornstr. 8a, 82166, Graefelfing, Germany, and ‘Dr. Maertens’ Marketing GmbH, An der Ach 3, 82402 Seeshaupt, Germany (opponents), represented by Mayr Kotsch Partnerschaftsgesellschaft mbB, Luise-Ullrich Strasse 14 (Design Offices), 80636 München, Germany (professional representative)

a g a i n s t

Federico de Rosa, via stampa 2/A, 20123 Milano, Italy and Giacomo Centore, via filzi 55, 62012, Civitanova Marche, Italy (applicants).

On 10/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 818 is upheld for all the contested goods.

2. European Union trade mark application No 17 890 616 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

The opponents filed an opposition against all the goods of European Union trade mark application No 17 890 616 for the figurative mark . The opposition is based on, inter alia, international trade mark registration No 1 411 210 designating Benelux, France, Italy and the United Kingdom, for the word mark ‘DOC’. The opponents 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 opponents’ international trade mark registration No 1 411 210 designating Benelux, France, Italy and the United Kingdom.

a) The goods

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

Class 25: Footwear; boots; sandals; shoes; boot uppers; inner soles; fittings of metal for footwear; soles for footwear; insoles for footwear; soles and insoles for industrial manufactured footwear.

The contested goods are the following:

Class 25: Clothing.

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 clothing is similar to the opponents’ footwear as they have the same purpose: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothing will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear.

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 similar are directed at the public at large.

The degree of attention is considered average.

c) The signs

DOC
Earlier trade mark	Contested sign

The relevant territories are Benelux, France, Italy and the United Kingdom.

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 common word ‘DOC’ will be perceived by the majority of the relevant public as the abbreviation of the word ‘Document’. A substantial part of the public will also associate this element with the abbreviation of the word ‘Doctor’. This element is considered distinctive to an average degree.

The contested sign is a figurative mark that consists of the abovementioned verbal element and a depiction of a rose. The flower’s bud is placed inside the letter ‘D’ whereas the stalk with the thorns is placed inside the letter ‘O’. The figurative element is not related to the relevant goods in a way that would undermine its distinctiveness and is, therefore, considered distinctive to an average degree.

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).

Visually, the signs coincide in the verbal element ‘DOC’, which is the sole element of the earlier mark and the only verbal element of the contested sign. The signs only differ in the depiction of the rose in the contested sign and in the stylisation of the letters which will have less impact on the consumer for the aforementioned reasons.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the verbal element ‘DOC’, present identically in both signs. Since the figurative element is not subject to phonetic assessment, the signs are aurally identical.

Conceptually, reference is made to the meanings explained above. Since both signs coincide in the concept conveyed by the verbal element ‘DOC’, they are conceptually similar to a high degree.

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 opponents did not explicitly claim that their 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The relevant goods are similar and target the public at large with an average degree of attention. The earlier sign has average inherent distinctiveness.

The signs are considered visually and conceptually similar to an average and high degree respectively and aurally identical, on account of the identical verbal element ‘DOC’, which is distinctive. The only difference between the signs lies in the figurative element of the contested sign, which is not sufficient to counterbalance the commonalities between the signs and exclude a likelihood of confusion, since it has less impact on consumers.

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/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way (a figurative element added to the identical word ‘DOC’) according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponents’ international trade mark registration No 1 411 210 designating Benelux, France, Italy and the United Kingdom. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier international trade mark registration No 1 411 210 designating Benelux, France, Italy and the United Kingdom leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponents (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicants are the losing party, they must bear the opposition fee as well as the costs incurred by the opponents 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 opponents 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

Begoña URIARTE VALIENTE

Alexandra APOSTOLAKIS

Anna BAKALARZ

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.