ATWOOD | Decision 2442294 - BA Brand Holdings LLC v. TOM TAILOR GmbH
Date Published: Sep 28, 2017
OPPOSITION No B 2 442 294
BA Brand Holdings LLC, 1370 Broadway, Suite 1107, New York 10018, United States of America (opponent), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative)
a g a i n s t
Tom Tailor GmbH, Garstedter Weg 14, 22453 Hamburg, Germany (applicant), represented by Taylor Wessing, Benrather Str. 15, 40213 Düsseldorf, Germany (professional representative).
On 04/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 442 294 is partially upheld, namely for the following contested goods
Class 25: Suits; Evening wear; Epaulet shirts; Workwear; Ball gowns and dresses; Bikinis; Brassieres; Bathing trunks; Clothing; Swimming costumes; Berets; Boxer shorts; Bath robes; Bodices (lingerie); Women’s blouses, jumpers [shirt fronts]; Gowns; Mittens; Articles of clothing for leisure wear; Belts (clothing); Clothing for gymnastics; Goloshes; Gaiters; Denim pants; Jackets [clothing]; Gloves (clothing); Scarves; Shirts; Pants (Am.); Chemisettes [shirt fronts]; Half-boots; Slippers; Garters; Girdles; Hotpants; Headgear; Headgear; Corsets; Ties; Hoods [clothing]; Carnival costumes, masquerade wear; Clothing for children; Trouser straps; Underwear; Bibs, not of paper; Dressing gowns; Jackets; Caps [headwear]; Nighties; Rainsuits; Footwear; Socks; Shawls; Collar protectors; Veils [clothing], Clothing, apparel; Wimples; Pullovers; Pants (Am.); Polo shirts; Parkas; Pelerines; Peep-toe sandals; Pullovers; Slipovers; Combinations [clothing]; Outdoor clothing; Skirts; Stockings; Sleepsuits; Sports shoes, Low shoes; Sports shoes; Aprons (clothing); Shoes, Low shoes; Lace boots; Boots; Sandals; Garters; Dinner jackets; Spaghetti strap tops; Ski-wear; Ski boots; Sportswear; Tights; Knitwear [clothing]; Slippers; Tee-shirts; Togas; Singlets; Knitwear (clothing); Exercise suits; Theatrical costumes; Uniforms; Underwear; Underwear; Pants (Am.); Topcoats, Clothing, apparel; Waistcoats; Lingerie, clothing; Leggings; Thong sandals; Hooded pullovers.
2. European Union trade mark application No 13 080 395 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 the European Union trade mark application No 13 080 395. The opposition is based on, inter alia, European Union trade mark registration No 10 175 552. The opponent 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 opponent’s European Union trade mark registration No 10 175 552.
- The goods
The goods on which the opposition is based are the following:
Class 25: Women’s apparel, namely, blouses, coats, dresses, jackets, pants and skirts; clothing, footwear, headgear.
The contested goods are the following:
Class 25: Suits; Evening wear; Epaulet shirts; Workwear; Ball gowns and dresses; Bikinis; Brassieres; Bathing trunks; Clothing; Swimming costumes; Berets; Boxer shorts; Bath robes; Bodices (lingerie); Women’s blouses, jumpers [shirt fronts]; Gowns; Mittens; Articles of clothing for leisure wear; Belts (clothing); Clothing for gymnastics; Goloshes; Gaiters; Denim pants; Jackets [clothing]; Gloves (clothing); Scarves; Shirts; Pants (Am.); Chemisettes [shirt fronts]; Half-boots; Slippers; Garters; Girdles; Hotpants; Headgear; Headgear; Corsets; Ties; Hoods [clothing]; Carnival costumes, masquerade wear; Clothing for children; Trouser straps; Underwear; Bibs, not of paper; Dressing gowns; Jackets; Caps [headwear]; Cap peaks; Nighties; Rainsuits; Footwear; Socks; Shawls; Collar protectors; Veils [clothing], Clothing, apparel; Wimples; Pullovers; Pants (Am.); Polo shirts; Parkas; Pelerines; Peep-toe sandals; Pullovers; Slipovers; Combinations [clothing]; Outdoor clothing; Skirts; Stockings; Sleepsuits; Sports shoes, Low shoes; Sports shoes; Aprons (clothing); Shoes, Low shoes; Lace boots; Boots; Footwear uppers; Sandals; Garters; Dinner jackets; Spaghetti strap tops; Ski-wear; Ski boots; Sportswear; Tights; Knitwear [clothing]; Slippers; Tee-shirts; Togas; Singlets; Knitwear (clothing); Exercise suits; Theatrical costumes; Uniforms; Underwear; Underwear; Pants (Am.); Topcoats, Clothing, apparel; Waistcoats; Lingerie, clothing; Leggings; Thong sandals; Hooded pullovers.
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.
Clothing (listed twice in the contested goods), footwear, headgear (listed twice in the contested goods) are identically contained in both lists of goods (including synonyms).
The contested suits; evening wear; epaulet shirts; workwear; ball gowns and dresses; bikinis; brassieres; bathing trunks; swimming costumes; boxer shorts; bath robes; bodices (lingerie); women’s blouses, jumpers [shirt fronts]; gowns; mittens; articles of clothing for leisure wear; belts (clothing); clothing for gymnastics; gaiters; denim pants; jackets (listed twice) [clothing]; gloves (clothing); scarves; shirts; pants (Am.) (listed three times); chemisettes [shirt fronts]; garters (listed twice); girdles; hotpants; corsets; ties; hoods [clothing]; carnival costumes, masquerade wear; clothing for children; trouser straps; underwear; bibs, not of paper; dressing gowns; nighties; rainsuits; socks; shawls; collar protectors; veils [clothing], clothing, apparel (listed twice); pullovers (listed twice); polo shirts; parkas; pelerines; slipovers; combinations [clothing]; outdoor clothing; skirts; stockings; sleepsuits; aprons (clothing); dinner jackets; spaghetti strap tops; ski-wear; sportswear; tights; knitwear [clothing] (listed twice); tee-shirts; togas; singlets; exercise suits; theatrical costumes; uniforms; underwear (listed twice); topcoats; waistcoats; lingerie; leggings; hooded pullovers are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested goloshes; half-boots; slippers (listed twice); peep-toe sandals; sports shoes (listed twice); low shoes (listed twice); shoes; lace boots; boots; sandals; ski boots; thong sandals are included in the broad category of the opponent’s footwear. Therefore, they are identical.
The contested berets; caps [headwear]; wimples are included in the broad category of the opponent’s headgear. Therefore, they are identical.
The remaining contested goods, cap peaks and footwear uppers, are dissimilar to all the opponent’s goods. Since they are parts, components or fittings of a final product, they have different natures and purposes, target different consumers, are distributed through different channels and are manufactured and provided by different undertakings.
- 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. The degree of attention will be average.
- The signs
| ATWOOD |
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 ‘ATWOOD’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a figurative mark composed of three verbal elements. There is a stylised letter ‘B’ at the beginning of the mark, which is followed by the elements ‘BRIAN’ and ‘ATWOOD’. It should be noted that, contrary to the applicant’s observations, the earlier mark is not depicted in a grey frame. The grey background is a result of the low quality of the image of the mark.
The element ‘B’ at the beginning of the earlier mark, will be perceived as referring to the verbal element ‘BRIAN’. The verbal elements ‘BRIAN’ and ‘ATWOOD’ will be perceived by the relevant public as a given name and a family name, as agreed by the parties. All the elements are distinctive in relation to the relevant goods, since they are not descriptive, allusive or otherwise weak.
The applicant argues that the earlier mark is a composite mark in which the element ‘ATWOOD’ does not have an independent distinctive role solely because it will be perceived as a family name. To support its reasoning, the applicant invoked the judgment of the Court of Justice of 24/06/2010, C-51/09 P, Barbara Becker, EU:C:2010:368. In this judgment, the Court of Justice stresses several times that, although it is possible that, in a part of the European Union, family names have, as a general rule, a more distinctive character than given names, it is appropriate, however, to take account of factors specific to the case and, in particular, the fact that the family name concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character (24/06/2010, C-51/09 P, Barbara Becker, EU:C:2010:368, § 36). Moreover, the Court of Justice finds, in the judgment cited, that the General Court erred in law to the extent that it based its assessment of the conceptual similarity of the marks on general considerations without analysing all the relevant factors specific to the case (24/06/2010, C-51/09 P, Barbara Becker, EU:C:2010:368, § 40), specifically the distinctiveness of a family name. Therefore, the distinctiveness of marks composed of given and family names must be examined on a case-by-case basis. In the present case, the distinctiveness of the earlier mark is not based solely on the fact that it is a family name, but also on the fact that it has no meaning in relation to the relevant goods. Both the given name ‘BRIAN’ and the family name ‘ATWOOD’ are familiar to the relevant public, as a result of their English origin and long history of use. As a result, the general rule of the more distinctive character of family names applies.
Consequently, the Opposition Division finds that all the elements of the signs are distinctive; however, on account of the assessment, it considers that the family name ‘ATWOOD’ will have more impact on the relevant consumers than the given name ‘BRIAN’.
Contrary to the applicant’s observations, the Opposition Division finds that the earlier mark has no elements that could be considered clearly more dominant than other elements. Considering that the element ‘B’ is the largest element, but the elements ‘BRIAN’ and ‘ATWOOD’ form words and, therefore, attract consumer’s attention, it cannot be determined whether or not any of the elements is more eye-catching than other elements.
The contested sign is a word mark composed of the single word ‘ATWOOD’, which will be perceived by the relevant public as a family name, as it is, as already mentioned, a very old, common family name of English origin. However, its meaning does not impede the distinctiveness of the contested sign in relation to the relevant goods.
Visually, the signs coincide in the element ‘ATWOOD’ and differ in the additional elements ‘B’ and ‘BRIAN’. The contested sign consists of six letters, whereas the earlier mark consists of a total of twelve letters; nonetheless, account is taken of the fact that the element that the signs have in common, namely ‘ATWOOD’, is more distinctive than the element ‘BRIAN’ and constitutes half of the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the separate letter ‘B’ at the beginning of the earlier mark will not be pronounced, because it will be perceived as a decorative duplication of the initial letter of the word ‘BRIAN’. The elements that will be pronounced, namely ‘BRIAN ATWOOD’ in the earlier mark and the whole contested sign, coincide in the word ‘ATWOOD’ and differ in the word ‘BRIAN’.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The relevant public will perceive the earlier mark as a given name and a family name and the contested sign as a family name; to this extent, there is a conceptual similarity between the signs. However, account is taken of the fact that, although the signs at issue contain the same family name, only one sign can identify a specific person by a full name.
Therefore, the signs are conceptually similar to an average degree.
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
As has been concluded above, the contested goods are partly identical and partly dissimilar to those of the earlier mark. The degree of attention will be average when choosing the relevant goods.
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.
Considering the normal degree of distinctiveness of the earlier mark and the average degree of visual, aural and conceptual similarity between the signs, 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).
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). Therefore, as a result of the commonalities between the signs, when consumers encounter the signs at different times, they may assume that the signs have the same origin or at least economically linked origins.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 No 10 175 552. As stated above in section c) of this decision, a likelihood of 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 to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods 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 European Union trade mark registration No 9 385 493 ‘BRIAN ATWOOD’ for the following goods in Class 25: women’s apparel, namely, shoes, blouses, coats, dresses, jackets, pants and skirts.
Earlier European Union trade mark registration No 9 385 493 covers a narrower scope of goods than the earlier right already compared above. It follows that 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 and this other earlier right.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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
Michaela SIMANDLOVA | José Antonio GARRIDO OTAOLA | Erkki MÜNTER |
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.