3-ELEVEN | Decision 2610049
Date Published: Sep 24, 2017
OPPOSITION No B 2 610 049
Calzados Lamolla, S.A., Calle Sant Pere, 24, 08221 Terrassa, Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)
a g a i n s t
Group Lotus PLC, Potash Lane, Hethel, Norwich, Norfolk NR14 8EZ, United Kingdom (applicant), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray’s Inn Road, London WC1X 8BT, United Kingdom (professional representative).
On 29/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 610 049 is upheld for all the contested goods, namely the following:
Class 25: Clothing, footwear, headgear.
2. European Union trade mark application No 14 331 391 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 331 391 for the word mark ‘3-ELEVEN’. After a limitation in the extent of the opposition, the opponent directed its opposition against some of the goods of the contested application, namely against all the goods in Class 25. The opposition is based on, inter alia, Spanish trade mark registration No 2 941 491 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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 the trade marks on which the opposition is based.
In the present case the contested trade mark was published on 21/08/2015. Earlier Spanish trade mark registration No 2 941 491 was registered on 29/12/2010. Therefore, the request for proof of use is inadmissible as regards this earlier mark.
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 Spanish trade mark registration No 2 941 491.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 25: Clothing, footwear, headwear.
Class 35: Import and export services; retail in shops and via global computer networks; wholesale; mail order sales; catalogue sales; sales promotions for others.
The contested goods are the following:
Class 25: Clothing, footwear, headgear.
Clothing, footwear, headgear are identically contained in both lists of goods and services.
- 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 with an average degree of attention.
- The signs
3-ELEVEN | |
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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 a figurative mark, consisting of the digits ‘11’; the first digit is white with a black outline and the second digit is black. In the second digit ‘1’, the word ‘ELEVEN’ is depicted vertically in white lower case letters.
The contested sign is the word mark ‘3-ELEVEN’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.
Regarding the coinciding verbal element ‘ELEVEN’, although it cannot be excluded that a part of the public may be familiar with its meaning in English (that of the number 11), the Opposition Division considers that a substantial part of the public will not attribute any meaning to it and will perceive it as a fanciful term. Moreover, the English word ‘ELEVEN’ does not resemble its Spanish equivalent, ‘ONCE’.
The Opposition Division will focus on the part of the public for which the word element ‘ELEVEN’ does not have a meaning. Given that this element will not be associated with any concept, it is distinctive to an average degree for the goods at issue.
The digits ‘11’ in the earlier mark and ‘3’ in the contested sign will be perceived as the numbers they identify. They are also distinctive in relation to the goods at issue, as they do not describe or allude to any of their essential characteristics.
Although the word ‘ELEVEN’ in the earlier mark is smaller than the digits ‘11’, it is in a central position in the earlier mark and is clearly perceptible, as it is in white letters, which contrast with the black background formed by the digit ‘1’. Therefore, the Opposition Division is of the opinion that the earlier mark has no elements that are clearly more dominant visually than other elements. Since the contested sign is a word mark, it has no dominant elements.
Visually, the signs coincide in the verbal element ‘ELEVEN’, which is made up of six letters and is present identically in both marks. They differ in the numerals in the signs, namely two digits, ‘11’, in the earlier mark and one digit, ‘3’, in the contested sign, as well as in the hyphen in the contested sign and in the particular graphical features and the arrangement of the elements in the earlier mark.
As the signs coincide in the word ‘ELEVEN’, present as an independent and distinctive element in both signs, they are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the word ‘ELEVEN’, present identically in both signs, which will be pronounced in three syllables. The pronunciation differs in the sound of the number ‘11’ in the earlier mark, which will be pronounced as the Spanish word ‘once’ in two syllables, [on-θe], and the number ‘3’ in the contested sign, pronounced as the Spanish word ‘tres’ in one syllable.
Therefore, the signs are aurally similar to an average degree on account of the coinciding word ‘ELEVEN’.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public taken into account will not attribute a meaning to the coinciding word ‘ELEVEN’. As the earlier mark will be associated with the concept of the number ‘11’ and the contested sign with the concept of the number ‘3’, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- 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 8 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).
The goods under comparison are identical and target the public at large with an average degree of attention. The distinctiveness of the earlier mark is normal.
The signs are visually and aurally similar to an average degree on account of the verbal element ‘ELEVEN’, which they have in common. The signs differ as a result of the particular graphical depiction of the earlier mark, which is not particularly striking and will not obscure or camouflage the number ‘11’ or the verbal element ‘ELEVEN’ of the mark. They also differ in the digits in the marks, ‘11’ in the earlier mark and ‘3’ in the contested sign, which will not go unnoticed by the relevant public. Nevertheless, according to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (02/11/2003, T-286/02, Kiap Mou, EU:T:2003:311; 15/02/2005, T-169/02, Negra modelo, EU:T:2005:46; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102; 08/03/2005, T-32/03, Jello Schuhpark, EU:T:2005:82; 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292; 23/10/2002, T-104/01, Fifties, EU:T:2002:262; 04/05/2005, T-22/04, Westlife, EU:T:2005:160), and this element that the marks have in common retains an independent distinctive role in a composite mark (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30).
As explained above, the word ‘ELEVEN’ does not convey a meaning for at least part of the relevant Spanish consumers. Therefore, the part of the public taken into account will perceive this element as a distinctive and fanciful term, which is distinguishable in both signs and plays an independent role within them.
Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).
Account must also be taken of the principle that a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, this principle is of particular importance, considering that the contested goods are all identical to the opponent’s goods, which offsets the differences between the signs.
Consequently, consumers may legitimately believe that the contested trade mark, ‘3-ELEVEN’, is a new version or a brand variation of the earlier figurative mark , for example designating a new line or a new collection of clothing/headgear/footwear, indicated by a specific number, ‘3’, in addition to the word ‘ELEVEN’. Therefore, consumers may confuse the origins of the conflicting goods and may believe that they originate from the same undertaking or from economically linked undertakings.
Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, in relation to identical goods for part of the Spanish public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 941 491. It follows that the contested trade mark must be rejected for all the contested goods.
As the abovementioned earlier mark 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 opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
Pedro JURADO MONTEJANO | Boyana NAYDENOVA | Adriana VAN ROODEN |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.