3OTTO3 | Decision 2774688
Date Published: Oct 15, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 774 688
Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany
(opponent), represented by Otto (GmbH & Co KG), Nicola Franzky c/o Otto (GmbH
& Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (employee
representative)
a g a i n s t
Mauro Russo, Viale Gran Sasso, 22, 20121 Milano, Italy, Andrea Corsi, Via Del
Ponte Di Certosa, 6, Firenze, Italy, Emanuela Bontempi, Via Marina, 4, 60018
Montemarciano, Italy, BN Srl, Via Atene, 10, 56038 Ponsacco. Italy (applicants),
represented by Onofrio Musco, Via Monte Sabotino, 6, 76011 Bisceglie, Italy
(professional representative).
On 13/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 774 688 is partially upheld, namely for the following
contested goods:
Class 3 Essential oils; cleaning and fragrancing preparations.
Class 18 Shoulder belts; bags; handbags; towelling bags; purses;
leather wallets; chain mesh purses; evening handbags; small
clutch purses; ladies' handbags; handbags made of leather;
small bags for men; key bags; clutch bags; hipsacks; cosmetic
purses; leather purses; bags made of imitation leather; nappy
bags; slouch handbags; trunks [luggage]; traveling trunks;
valises; suitcases; umbrellas and parasols.
Class 25 Clothing; Headgear; Hats; Shoes.
2. European Union trade mark application No 15 542 848 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 15 542 848 for the word mark ‘3OTTO3’. The opposition is based on,
inter alia, European Union trade mark registration No 13 713 151 . The
opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 774 688 page: 2 of 8
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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 European Union trade mark registration No 13 713 151.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 25 Clothing, footwear, headgear.
Class 35 Wholesaling and retailing of bleaching preparations and other
substances for laundry use, cleaning, polishing, scouring and abrasive
preparations, soaps, perfumery, essential oils, cosmetics, hair lotions,
dentifrices, trunks and travelling bags, bags, key cases, backpacks,
pocket wallets, purses, umbrellas and parasols, walking sticks,
clothing, footwear, headgear.
The contested goods are the following:
Class 3 Essential oils and aromatic extracts; Cleaning and fragrancing
preparations; Animal grooming preparations; Tailors' and cobblers'
wax.
Decision on Opposition No B 2 774 688 page: 3 of 8
Class 18 Sausage skins and imitations thereof; Umbrellas and parasols;
Worked or semi-worked hides and other leather; Imitation leather;
Harness fittings; Trimmings of leather for furniture; Girths of leather;
Leatherboard; Kid; Straps made of imitation leather; Shoulder straps;
Leather laces; Leather, unworked or semi-worked; Leather for shoes;
Leather thread; Moleskin [imitation of leather]; Furniture coverings of
leather; Boxes of leather or leatherboard; Boxes made of leather;
Butts [parts of hides]; Imitation leather sold in bulk; Leather cloth;
Shoulder belts; Valves of leather; Bags; Handbags; Purses; Leather
wallets; Chain mesh purses; Evening handbags; Garment carriers;
Towelling bags; Straps for handbags; Small clutch purses; Ladies'
handbags; Handbags made of leather; Small bags for men; Key bags;
Clutch bags; Hipsacks; Cosmetic purses; Leather purses; Bags made
of imitation leather; Nappy bags; Slouch handbags; Trunks [luggage];
Traveling trunks; Valises; Attache cases; Business cases; Suitcase
handles; Suitcases; Attache cases made of imitation leather.
Class 25 Clothing; Headgear; Hats; Shoes.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
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 3
Retail services concerning the sale of particular goods are similar to a low degree to
those particular goods. Therefore, the contested essential oils; cleaning and
fragrancing preparations are similar to a low degree to the opponent’s retailing of
cleaning preparations, perfumery, essential oils. Although the nature, purpose and
method of use of these goods and services are not the same, they have some
similarities, as they are complementary and the services are generally offered in the
same places where the goods are offered for sale. Furthermore, they target the same
public.
However, similarity between retail services of specific goods covered by one mark
and specific goods covered by another mark can only be found where the goods
involved in the retail services and the specific goods covered by the other mark are
identical. This condition is not fulfilled in respect of the contested aromatic extracts;
animal grooming preparations; tailors' and cobblers' wax since the goods at issue are
not identical to the specific goods that are subject of the earlier marks retail services.
The contested aromatic extracts; animal grooming preparations; tailors' and cobblers'
wax are dissimilar to all the goods and services of the earlier mark in Classes 25 and
35 as they differ in nature, producer/provider, relevant public, purpose, distribution
channels and are neither complementary nor in competition with each other.
Contested goods in Class 18
Decision on Opposition No B 2 774 688 page: 4 of 8
The contested shoulder belts; bags; handbags; towelling bags; purses; leather
wallets; chain mesh purses; evening handbags; small clutch purses; ladies'
handbags; handbags made of leather; small bags for men; key bags; clutch bags;
hipsacks; cosmetic purses; leather purses; bags made of imitation leather; nappy
bags; slouch handbags are similar to the opponents clothing. They can coincide in
producer, relevant public and distribution channels.
Retail services concerning the sale of particular goods are similar to a low degree to
those particular goods. Therefore, the contested trunks [luggage]; traveling trunks;
valises; suitcases; umbrellas and parasols are similar to a low degree to the
opponent’s retailing of trunks and travelling bags, umbrellas and parasols. Although
the nature, purpose and method of use of these goods and services are not the
same, they have some similarities, as they are complementary and the services are
generally offered in the same places where the goods are offered for sale.
Furthermore, they target the same public.
The contested sausage skins and imitations thereof; worked or semi-worked hides
and other leather; imitation leather; harness fittings; trimmings of leather for furniture;
girths of leather; leatherboard; kid; straps made of imitation leather; shoulder straps;
leather laces; leather, unworked or semi-worked; leather for shoes; leather thread;
moleskin [imitation of leather]; furniture coverings of leather; boxes of leather or
leatherboard; boxes made of leather; butts [parts of hides]; imitation leather sold in
bulk; leather cloth; valves of leather; suitcase handles; garment carriers; straps for
handbags; attache cases; business cases; attache cases made of imitation leather
are dissimilar to all the goods and services of the earlier mark in Classes 25 and 35
as they differ in nature, producer/provider, relevant public, purpose, distribution
channels and are neither complementary nor in competition with each other.
Contested goods in Class 25
Clothing; headgear are identically contained in both lists of goods.
Hats are included in the broad category of the opponent’s headgear. Therefore, they
are identical.
Shoes are included in the broad category of the opponent’s footwear. Therefore, they
are identical.
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 and services found to be identical or (lowly) similar
are directed at the public at large and at business customers with specific
professional knowledge or expertise.
They are neither particularly high in price nor complex. The public’s degree of
attentiveness will be average.
Decision on Opposition No B 2 774 688 page: 5 of 8
c) The signs
3OTTO3
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 common element ‘OTTO’ is meaningful in certain territories, for example in those
countries where German is understood. Consequently, the Opposition Division finds it
appropriate to focus the comparison of the signs on the German-speaking part of the
public such as in Germany and Austria.
The element ‘OTTO’, present in both signs, will be understood by the relevant public
as a male given name. As it is not descriptive, allusive or otherwise weak for the
relevant goods and services, it is distinctive.
The element ‘3’, present twice in the contested mark, will be associated with the
concept of said number. As it is not descriptive, allusive or otherwise weak for the
relevant goods and services, it is distinctive.
As regards the earlier sign, it is composed of a distinctive verbal element and merely
decorative figurative aspects (colour, typeface), which are non-distinctive.
Visually, the signs coincide in the distinctive word element ‘OTTO’ forming the entire
earlier mark and central element of the contested sign. They differ in the additional
number ‘3’, present in the beginning and at the end of the contested sign, and the
non-distinctive figurative aspects of the earlier mark.
Therefore, the signs are visually similar to an above average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘OTTO’,
present identically in both signs. The pronunciation differs in the sound of the number
‘3’ (pronounced ‘Drei’ in German) in the beginning and at the end of the contested
sign. The figurative aspects of the earlier mark have no aural impact.
Therefore, the signs are aurally similar to an average degree.
Decision on Opposition No B 2 774 688 page: 6 of 8
Conceptually, although the contested sign as a whole does not have any meaning
for the public in the relevant territory, the element ‘OTTO’, included in both signs, will
be associated with the meaning explained above. To that extent, the signs are
conceptually highly similar, notwithstanding the presence of an additional concept
(number ‘3’) in the contested sign.
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.
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 and services 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).
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.
Given that the contested sign incorporates the entire distinctive element of the earlier
mark, linking the signs conceptually, the mere addition of the number ‘3’ in the
beginning and at the end of the contested sign is not sufficient to safely exclude a
likelihood of confusion in the present case.
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
according to the type of goods or services that it designates (23/10/2002, T-104/01,
Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the German-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration. As stated above in section c) of this decision, a likelihood of
Decision on Opposition No B 2 774 688 page: 7 of 8
confusion for only part of the relevant public of the European Union is sufficient to
reject the contested application.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or (lowly) 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.
Since the opposition is partially 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 and reputation as
claimed by the opponent and in relation to identical and (lowly) similar goods and
services. The result would be the same even if the earlier mark enjoyed an enhanced
degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness
of the opposing mark in relation to dissimilar goods, as the similarity of goods and
services is a sine qua non for there to be likelihood of confusion. The result would be
the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
The opponent has also based its opposition on the following earlier trade mark
European Union trade mark No 10 619 393
Since this mark is almost identical to the one which has been compared and covers
the same scope of goods and services, the outcome cannot be different with respect
to goods for which the opposition has already been rejected. Therefore, no likelihood
of confusion exists with respect to those goods.
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.
Decision on Opposition No B 2 774 688 page: 8 of 8
The Opposition Division
Lars HELBERT Tobias KLEE Swetlana BRAUN
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.