OPPOSITION Nо B 3 106 714

Py Acquisitions Llc, 144-42 Jewel Avenue, 11367 Flushing, New York, United States of America (opponent), represented by Wolfram H. Müller, Teltower Damm 15, 14169 Berlin, Germany (professional representative)

a g a i n s t

Carlos M. Silva Unipessoal Lda., Rua Amadeu de Sousa Cardoso Nº3 R/c Esquerdo Bairro Lisbonense, 2500-323 Caldas Da Rainha, Portugal (applicant), represented by Alvaro Duarte & Associados, Avª Marquês De Tomar, Nº44-6, 1069-229 Lisboa, Portugal (professional representative).

On 02/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 714 is partially upheld, namely for the following contested goods:

Class 18: Diplomatic bags; trunks [luggage]; gladstone bags; suitcases; suitcases; attaché cases; kit bags; roller suitcases; luggage covers; cabin bags; business cases; attaché cases; handbags; randsels [Japanese school satchels]; motorized suitcases; travelling sets [leatherware]; straps for luggage; suitcase handles; suitcase handles; evening handbags; straps for handbags; handbags, purses and wallets; luggage, bags, wallets and other carriers; handbags made of imitations leather; leather purses; card wallets [leatherware]; briefcases [leather goods]; key cases; wallets; leather wallets; wrist-mounted wallets; wallets of precious metal; wallets including card holders; credit card cases [wallets]; banknote holders; leather bags and wallets; card wallets [leatherware]; wallets, not of precious metal; wallets for attachment to belts; ladies’ handbags; leather credit card wallets; business card holders in the form of wallets; pouches; roll bags; briefcases [leather goods]; chain mesh purses; bumbags; key bags; travel baggage; travelling bags; cosmetic purses; cosmetic purses; leather purses; drawstring pouches; small felt bags; sporrans; chain mesh purses; purses, not of precious metal; all-purpose carrying bags; ladies’ handbags; small clutch purses; casual bags; waterproof bags; briefcases [leather goods]; briefcases [leather goods]; casual bags; beach bags; toiletry bags; satchels; shoulder bags; bumbags; travelling bags; cosmetic purses; briefcases [leather goods]; multi-purpose purses; small purses; leather coin purses; backpacks; small rucksacks; backpacks; backpacks; backpacks; haversacks; briefcases [leather goods].

Class 25: Caps [headwear]; bonnets; flat caps; knitted caps; peaked caps; scarves; mufflers [clothing]; neck scarves [mufflers]; snoods [scarves]; neck tubes; neck scarves [mufflers]; hoods [clothing]; cowls [clothing]; headgear; bonnets [headwear]; hats; waist belts; belts [clothing]; leather belts [clothing]; belts made from imitation leather; kerchiefs [clothing]; neck scarves; silk scarves; neckerchiefs; sashes for wear; ascots; ascots; berets; collars for dresses; cuffs.

2. European Union trade mark application No 18 040 200 is rejected for all the above goods. It may proceed 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 18 040 200 ‘Jetlag’ (word mark). The opposition is based on, inter alia, German trade mark registration No 30 101 394 ‘JET LAG’ (word mark). The opponent invoked Article 8(1)(a) and (b) EUTMR.

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 has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 opponent’s German trade mark registration No 30 101 394.

a) The goods

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

Class 18: Handbags; garment bags for travel; imitation leather and articles made therefrom; umbrellas; backpacks; parasols.

Class 24: Cotton fabrics; felt material; felt; flannel [fabric]; lining fabric for footwear; linings [textile]; fabrics for textile use; jersey [fabric]; jute fabric; fabric of imitation animal skins; ramie fabric; velvet; buckram; textile material, included in Class 24; labels of textile; knitted fabric; plastic material [substitute for fabrics]; non-woven fabrics; textiles; woollen cloth.

Class 25: Clothing of imitations of leather; gabardines [clothing]; belts, being clothing; low shoes; half-boots; shirt fronts; shirts; trousers, included in Class 25; jackets; jerseys [clothing]; ready-made clothing; headgear; caps (headwear); caps peaks; outerclothing; overalls; parkas; sweaters; rain coats; skirts; sandals; neck scarves [mufflers]; shoes, included in Class 25; socks; headbands [clothings]; sweaters; T-shirts; vests, included in Class 25.

Class 28: Games, included in Class 28.

The contested goods are the following:

Class 9: Polarizing spectacles; prescription eyewear; spectacle holders; pince-nez chains; eyewear pouches; sunglasses; magnifying eyeglasses; eyeglass lanyards; frames for spectacles and sunglasses; cases for spectacles and sunglasses.

Class 14: Paste jewellery [costume jewelry (Am.)]; paste jewellery [costume jewelry (Am.)]; ornaments [jewellery, jewelry (Am.)]; rings [jewellery, jewelry (Am.)]; lockets [jewellery]; pearls [jewellery]; bracelets [jewellery, jewelry (Am.)]; amulets [jewellery, jewelry (Am.)]; chains [jewelry]; brooches [jewellery]; necklaces [jewellery]; bracelets [jewellery, jewelry (Am.)]; amulets [jewellery, jewelry (Am.)]; brooches [jewellery]; imitation jewellery ornaments; jewels; jewelry findings; pewter jewellery; paste jewellery [costume jewelry (Am.)]; paste jewellery [costume jewelry (Am.)]; plastic costume jewellery; jewellery, including imitation jewellery and plastic jewellery; gold thread [jewellery]; jewels; silver thread [jewellery]; body costume jewellery; shoe jewellery; gold thread [jewellery]; hat jewellery; jewelry rolls; jewelry rolls; threads of precious metal [jewellery]; threads of precious metal [jewellery]; bracelets made of embroidered textile [jewellery]; watch pouches; watch fobs.

Class 18: Diplomatic bags; trunks [luggage]; gladstone bags; suitcases; suitcases; attaché cases; kit bags; roller suitcases; luggage covers; cabin bags; business cases; attaché cases; handbags; randsels [Japanese school satchels]; motorized suitcases; travelling sets [leatherware]; purse frames; straps for luggage; suitcase handles; suitcase handles; evening handbags; straps for handbags; handbags, purses and wallets; luggage, bags, wallets and other carriers; handbags made of imitations leather; leather purses; card wallets [leatherware]; briefcases [leather goods]; key cases; wallets; leather wallets; wrist-mounted wallets; wallets of precious metal; wallets including card holders; credit card cases [wallets]; banknote holders; leather bags and wallets; card wallets [leatherware]; wallets, not of precious metal; wallets for attachment to belts; ladies’ handbags; leather credit card wallets; business card holders in the form of wallets; pouches; roll bags; briefcases [leather goods]; chain mesh purses; bumbags; key bags; travel baggage; travelling bags; cosmetic purses; cosmetic purses; leather purses; drawstring pouches; small felt bags; sporrans; chain mesh purses; purses, not of precious metal; all-purpose carrying bags; ladies’ handbags; small clutch purses; casual bags; waterproof bags; briefcases [leather goods]; briefcases [leather goods]; casual bags; beach bags; toiletry bags; satchels; shoulder bags; bumbags; travelling bags; cosmetic purses; briefcases [leather goods]; multi-purpose purses; small purses; leather coin purses; backpacks; small rucksacks; backpacks; backpacks; backpacks; haversacks; briefcases [leather goods].

Class 25: Caps [headwear]; bonnets; flat caps; knitted caps; peaked caps; scarves; mufflers [clothing]; neck scarves [mufflers]; snoods [scarves]; neck tubes; neck scarves [mufflers]; hoods [clothing]; cowls [clothing]; headgear; bonnets [headwear]; hats; waist belts; belts [clothing]; leather belts [clothing]; belts made from imitation leather; kerchiefs [clothing]; neck scarves; silk scarves; neckerchiefs; sashes for wear; ascots; ascots; berets; collars for dresses; cuffs.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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.

Contested goods in Class 9

The contested polarizing spectacles; prescription eyewear; pince-nez chains; sunglasses; magnifying eyeglasses; eyeglass lanyards; frames for spectacles and sunglasses are dissimilar to all the opponent’s goods in Classes 18, 24, 25 and 28. They have different intended purposes. Moreover, their producers, end users and distribution channels are usually distinct. Furthermore, they are neither complementary nor in competition. Even though some fashion designers nowadays also sell fashion accessories (such as glasses) under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.

The contested spectacle holders; eyewear pouches; cases for spectacles and sunglasses are also dissimilar to all the opponent’s goods in Classes 18, 24, 25 and 28, especially handbags. They have different distribution channels and are generally offered together with the goods for which they are designed. Although their purpose is the same as the opponent’s handbags, in the sense that they carry an item, this is not sufficient to find them similar. Their public is also different.

Contested goods in Class 14

All the contested goods are considered dissimilar to all the opponent’s goods in Classes 18, 24, 25 and 28, especially clothing, footwear and headgear. Their nature and main purpose are different. They do not have the same distribution channels and are neither in competition nor complementary. Even though some fashion designers nowadays also sell fashion accessories (such as jewellery) under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.

Contested goods in Class 18

The contested diplomatic bags; trunks [luggage]; gladstone bags; suitcases; suitcases; handbags; attaché cases; kit bags; roller suitcases; luggage covers; cabin bags; business cases; attaché cases; randsels [Japanese school satchels]; motorized suitcases; travelling sets [leatherware]; evening handbags; purses and wallets; luggage, bags, wallets and other carriers; handbags made of imitations leather; leather purses; card wallets [leatherware]; briefcases [leather goods]; key cases; wallets; leather wallets; wrist-mounted wallets; wallets of precious metal; wallets including card holders; credit card cases [wallets]; banknote holders; leather bags and wallets; card wallets [leatherware]; wallets, not of precious metal; wallets for attachment to belts; ladies’ handbags; leather credit card wallets; business card holders in the form of wallets; pouches; roll bags; briefcases [leather goods]; chain mesh purses; bumbags; key bags; travel baggage; travelling bags; cosmetic purses; cosmetic purses; leather purses; drawstring pouches; small felt bags; sporrans; chain mesh purses; purses, not of precious metal; all-purpose carrying bags; ladies’ handbags; small clutch purses; casual bags; waterproof bags; briefcases [leather goods]; briefcases [leather goods]; casual bags; beach bags; toiletry bags; satchels; shoulder bags; bumbags; travelling bags; cosmetic purses; briefcases [leather goods]; multi-purpose purses; small purses; leather coin purses; backpacks; small rucksacks; backpacks; backpacks; backpacks; haversacks; briefcases [leather goods] are different types of bags and wallets. They are at least similar to the opponent’s handbags; garment bags for travel; backpacks. Without excluding that some of them can coincide in additional factors or even be identical to the opponent’s goods, all these goods have, at least, the same public, producers and distribution channels as the opponent’s handbags; garment bags for travel; backpacks.

The contested straps for luggage; suitcase handles; suitcase handles; straps for handbags are accessories that may be produced by the same undertakings as the opponent’s handbags; garment bags for travel. They are usually sold through the same distribution channels and target the same relevant public. Therefore, they are similar.

The contested purse frames are dissimilar to all the opponent’s goods in Classes 18, 24, 25 and 28, especially handbags; garment bags for travel. They are specific frames used to make purses and are not intended to carry things. Their nature and main purpose are different. They do not have the same distribution channels and are neither in competition, nor complementary.

Contested goods in Class 25

The contested goods are different types of clothing and headgear. They are at least similar to the opponent’s goods in Class 25. Without excluding that some of them can coincide in additional factors or even be identical to the opponent’s goods, all these goods at least have the same public, providers and distribution channels.

b) The signs

JET LAG	Jetlag
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 marks are composed of the same letters, the only difference is that the verbal elements ‘JET’ and ‘LAG’ of the earlier mark are separated by a space, while in the contested mark they are not. The space between the verbal element in the earlier mark has barely any impact (if any) on the visual, aural and conceptual comparison of the signs. Furthermore, the fact that the earlier mark appears in upper-case letters, whereas the contested sign is written in title-case letters is irrelevant for the comparison, unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), which is not the case here. This is because for word marks, it is the word as such that is protected and not its written form. Moreover, contrary to the applicant’s opinion, the space between the verbal elements ‘JET’ and ‘LAG’ in the earlier mark will not make any conceptual difference, as the relevant public will perceive the same concept in both marks, namely ‘[d]isturbance of the biological rhythm due to the time differences associated with long air travel’ (information extracted from Duden on 02/12/2020 at https://www.duden.de/rechtschreibung/Jetlag).

Therefore, the marks are highly similar, if not even identical.

c) 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/or 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).

It has been established in the previous sections of this decision that the goods at issue are partly similar to varying degrees and partly dissimilar.

As illustrated in the comparison of signs, their near identity implies that consumers will not be able to distinguish between them. This conclusion would hold true even if the distinctiveness of the coinciding element(s) and the earlier mark as a whole was very low and irrespective of the degree of attention and the sophistication of the relevant public.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The signs are visually, aurally and conceptually highly similar, if not identical. The space in the earlier mark is not a significant difference and, given the above arguments on the imperfect recollection, it is clear that there is nothing that distinguishes the signs.

In its observations, the applicant argues that it used the contested mark in Portugal for over 20 years for jewellery and fashion accessories.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

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 German trade mark registration No 30 101 394.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to varying degrees 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 international trade mark registration No 779 693 designating Benelux, Bulgaria, the Czech Republic, Denmark, Greece, Spain, France, Croatia, Italy, Cyprus, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom, for the word mark ‘JET LAG’ for handbags, travelling bags for clothes, imitations of leather and products thereof, umbrellas, rucksacks, parasols in Class 18, ramie fiber in Class 22, fabrics made of cotton, felt, flannel; lining for shoes; lining; fabrics made of jersey; jute fabrics; velvet; buckram; fabrics included in this class; textile labels; knitted fabrics; equivalent fabrics made of plastic; fabrics made of fleece; woven fabrics; fabrics made of wool in Class 24, clothing made of leather imitation, clothing made of gabardine, belts (clothing); slippers, low boots, shirt-blouses, shirts, trousers included in this class; jackets, clothing made of jersey, ready to wear clothes, headwear, caps, peaks of caps, outer clothing, overalls, parkas, pullovers, raincoats, skirts, sandals, scarfs, shoes included in this class, socks, headbands, sweaters, T-shirts, vests included in this class in Class 25 and games included in this class in Class 28.

Since these marks are identical to the one that has been compared and cover the same or a narrower scope of goods, with the exception of ramie fiber in Class 22, the outcome cannot be different with respect to goods for which the opposition has already been rejected. As for the opponent’s ramie fiber in Class 22, this has a different nature and purpose compared to the contested goods found dissimilar. Moreover, their producers, end users and distribution channels are usually distinct. Furthermore, they are neither complementary nor in competition. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the goods are obviously not identical.

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

Rosario GURRIERI

Francesca DRAGOSTIN

Cristina SENERIO LLOVET

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.