Advanced | Decision 2373721 - MIRTO CORPORACION EMPRESARIAL, S.L. v. Fabrice Van Liefferinge

Date Published: Oct 11, 2017

OPPOSITION No B 2 373 721

Mirto Corporacion Empresarial, S.L., C/ Emilio Muñoz, 57, 28037 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Fabrice Van Liefferinge, 61A, Rue Principale, 7595 Reckange, Luxembourg (applicant).

On 29/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 373 721 is upheld for all the contested goods, namely the following:

Class 25:        Football boots; football jerseys; replica football kits; studs for football boots; tee-shirts; tee-shirts; printed t-shirts; short-sleeved or long-sleeved t-shirts; shorts; shorts; gym shorts; short sets [clothing]; trousers shorts; pants (am.); shorts; leggings [trousers]; waterproof trousers; warm-up pants; dress pants; sweatpants; sweatpants; sweatpants; sweatpants; sports jerseys and breeches for sports; men’s and women’s jackets, coats, trousers, vests; jackets [clothing]; weatherproof jackets; heavy jackets; light-reflecting jackets; long jackets; jackets and socks; wind resistant jackets; sports jackets; quilted jackets [clothing]; tracksuit tops; warm-up jackets; sleeved jackets; sleeveless jackets; lumberjackets; knit jackets; jogging tops; socks; inner socks for footwear; socks and stockings; tennis socks; sports socks; socks; footwear; clothing; headgear; weatherproof clothing; garments for protecting clothing; polo shirts; polo sweaters; polo shirts; tennis shirts; sweat shirts; hooded sweatshirts; hooded tops; running shoes; jogging outfits; sweat shorts; jogging sets [clothing]; sweatpants; sweat suits; shell suits; sportswear; pocket squares; cycling shorts; bathwraps.

2.        European Union trade mark application No 12 670 428 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 some of the goods of European Union trade mark application No 12 670 428, namely against all the goods in Class 25. The opposition is based on Spanish trade mark registration No 2 737 472. 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 states that according to the Article 15 EUTMR and Directive 89/104/EEC, trade marks in all the Member States of the European Union are subject to the obligation of being put to a real and genuine use on the market within a period of five years following their registration.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

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 goods on which the opposition is based are the following:

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 25:        Football boots; football jerseys; replica football kits; studs for football boots; tee-shirts; tee-shirts; printed t-shirts; short-sleeved or long-sleeved t-shirts; shorts; shorts; gym shorts; short sets [clothing]; trousers shorts; pants (am.); shorts; leggings [trousers]; waterproof trousers; warm-up pants; dress pants; sweatpants; sweatpants; sweatpants; sweatpants; sports jerseys and breeches for sports; men’s and women’s jackets, coats, trousers, vests; jackets [clothing]; weatherproof jackets; heavy jackets; light-reflecting jackets; long jackets; jackets and socks; wind resistant jackets; sports jackets; quilted jackets [clothing]; tracksuit tops; warm-up jackets; sleeved jackets; sleeveless jackets; lumberjackets; knit jackets; jogging tops; socks; inner socks for footwear; socks and stockings; tennis socks; sports socks; socks; footwear; clothing; headgear; weatherproof clothing; garments for protecting clothing; polo shirts; polo sweaters; polo shirts; tennis shirts; sweat shirts; hooded sweatshirts; hooded tops; running shoes; jogging outfits; sweat shorts; jogging sets [clothing]; sweatpants; sweat suits; shell suits; sportswear; pocket squares; cycling shorts; bathwraps.

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 footwear; clothing; headgear are identically contained in the opponent’s list of goods.

The contested football boots; running shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested football jerseys; replica football kits; tee-shirts (listed twice in the applicant’s list of goods); printed t-shirts; short-sleeved or long-sleeved t-shirts; shorts (listed three times in the applicant’s list of goods); gym shorts; short sets [clothing]; trousers shorts; pants (am.); leggings [trousers]; waterproof trousers; warm-up pants; dress pants; sweatpants (listed four times in the applicant’s list of goods); sports jerseys and breeches for sports; men’s and women’s jackets, coats, trousers, vests; jackets [clothing]; weatherproof jackets; heavy jackets; light-reflecting jackets; long jackets; jackets; socks (listed four times in the applicant’s list of goods); wind resistant jackets; sports jackets; quilted jackets [clothing]; tracksuit tops; warm-up jackets; sleeved jackets; sleeveless jackets; lumberjackets; knit jackets; jogging tops; inner socks for footwear; stockings; tennis socks; sports socks; weatherproof clothing; garments for protecting clothing; polo shirts (listed twice in the applicant’s list of goods); polo sweaters; tennis shirts; sweat shirts; hooded sweatshirts; hooded tops; jogging outfits; sweat shorts; jogging sets [clothing]; sweatpants; sweat suits; shell suits; sportswear; cycling shorts; bathwraps are included in the broad category of, or overlap with, the opponent’s clothing. Therefore, they are identical.

The contested studs for football boots are rounded projections on the sole of a boot to give better grip. These goods and the opponent’s footwear share certain connections, as they usually coincide in their manufacturers and distribution channels and target the same relevant public. Furthermore they are complementary. Therefore, they are considered to be similar.

The contested pocket squares are accessories used to enhance the appearance of certain items of clothing such as suit jackets. Although having a different nature, these goods can be used in combination with the opponent’s clothing in Class 25. Also, it can be expected that these goods share the same origin and the same distribution channels. Therefore, they are considered to be similar.

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 or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

ADVANCE
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 consists of the word ‘ADVANCE’. The contested sign consists of the word ‘ADVANCED’, depicted in stylised upper case letters in blue underneath an abstract figurative element in grey, consisting of a combination of several triangles and circles. The representation of the letters of the word ‘ADVANCED’ in a stylised typeface does not alter the public’s perception of these elements as letters. Consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way, as in the present case.

The verbal elements ‘ADVANCE’ in the earlier mark and ‘ADVANCED’ in the contested sign do not have any meanings for the public in the relevant territory and are of an average distinctiveness. The figurative element of the contested sign is an abstract figure which does not convey a particular meaning either.

Consequently, none of the marks have any element that could be clearly considered more distinctive or more dominant (visually eye-catching) than other elements.

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

Visually, the signs coincide in the sequence of letters ‘ADVANCE’, which form the entire earlier mark and are placed in the same order at the beginning of the verbal element, ‘ADVANCED’, of the contested mark, which is the part that first catches the attention of the reader, since the public reads from left to right. The marks differ in the additional final letter ‘D’ at the end of the contested sign’s verbal element and in the figurative element and overall stylisation of the contested sign.

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; 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Consequently, consumers will more readily focus on the verbal element ‘ADVANCED’ of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ADVANCE’, present identically in both signs as the only letters of the earlier mark and as the first letters of the verbal element of the contested mark, which form the part that first catches the attention of the reader. The pronunciation differs in the sound of the final letter of the contested sign, ‘D’, which has no counterpart in the earlier mark. Therefore, the signs are aurally 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.

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.

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.

5. 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, and the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). 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 similar. The distinctiveness of the earlier mark is average. The signs are visually similar to an average degree and aurally similar to a high degree on account of the letter sequence ‘ADVANCE’ that they have in common, which constitutes the earlier mark and the first seven letters of the verbal element in the contested sign, ‘ADVANCED’. The fact that the letters that make up the earlier mark are reproduced in their entirety at the beginning of the contested sign is particularly relevant. The signs differ in the final letter, ‘D’, of the contested mark, in its figurative element and in the stylisation of its verbal element. However, these additional elements are not sufficient to clearly differentiate between the marks for the reasons set above.

Consequently, it is considered that, as a whole, the marks convey similar overall impressions.

Taking into account 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, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 737 472. It follows that the contested trade mark must be rejected for all the contested goods.

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

Benjamin Erik WINSNER

Boyana NAYDENOVA

Frédérique SULPICE

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.