CLASSIC Forever | Decision 2711250
Date Published: Sep 25, 2017
OPPOSITION No B 2 711 250
Kaufland Warenhandel GmbH & Co. KG, Rötelstr. 35, 74172 Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)
a g a i n s t
Key Optical Europe Srl, Località La Torre 14 H, 50038 Scarperia San Piero, Italy (applicant), represented by Massimiliano Caruso, Via degli Strozzi 2, 50123 Firenze, Italy (professional representative).
On 20/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 711 250 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 141 856. The opposition is based on international trade mark registrations No 1 234 154 and No 1 173 403 designating the European Union. 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 goods
The goods on which the opposition is based are the following:
International trade mark registration No 1 234 154 designating the European Union
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; toiletries (for personal hygiene); hair lotions for personal hygiene; cosmetic preparations for skin care; adhesives for cosmetic purposes; after-shave lotions; antiperspirants (toiletries); antistatic preparations for household purposes; aromatics (essential oils); quillaia bark for washing; bath salts, not for medical purposes; cosmetic preparations for baths; beauty masks; bleaching salts; bleaching soda; blueing for laundry; colour-brightening chemicals for household purposes (laundry); colour-removing preparations; cosmetic kits (filled); cosmetic preparations for slimming purposes; cosmetics for animals; cosmetic creams; skin whitening creams; denture polishes; preparations for cleaning dentures; breath freshening sprays; deodorants for human beings and for animals; detergents other than for use in manufacturing operations and for medical purposes; cosmetic dyes; eau de Cologne; eau de toilette; hair creams; hair gels, shampoos, hair conditioners and hair moisturizers (cosmetics); perfumes; lipsticks; face creams and lotions; false nails; cosmetic nail polishes and varnishes; bleaching preparations for cosmetic purposes; flavourings for cakes (essential oils); ethereal essences; cleansing milk for toilet purposes; eyebrow cosmetics; eyebrow pencils; fabric softeners for laundry use; false eyelashes; parquet floor wax; hair dyes; beard dyes; moustache wax; hair spray; hair waving preparations; laundry bleach; laundry soaking preparations; starch for laundry purposes; lotions for cosmetic purposes; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; mouth washes, not for medical purposes; nail care preparations; cosmetic pencils; parquet floor wax; pomades for cosmetic purposes; potpourris (fragrances); pumice stone; sandcloth; sandpaper; scented wood; shampoos for pets; boot cream; shoe polish; shoe wax; smoothing preparations (starching); soap for brightening clothes; starch glaze for laundry purposes; sun-tanning preparations (cosmetics); tissues impregnated with cosmetic lotions; varnish-removing preparations; depilatory wax; laundry wax; polishing wax; creams for leather; depilatory preparations; petroleum jelly for cosmetic purposes; decorative transfers for cosmetic purposes; incense sticks (joss sticks); joss sticks; scents; bath preparations, not for medical purposes; dishwasher detergents; toiletry preparations as far as included in this class; cosmetic sunscreen and sun-tanning preparations; sun blocks; preparations for skin care after sunbathing; cloths impregnated with a detergent for cleaning; cotton wool products as far as included in this class, in particular cotton wool, swabs, cotton wool pads; preparations for unblocking drain pipes; scouring solutions; antistatic preparations for household purposes; preparations to make shiny the leaves of plants; extracts of flowers (perfumes); bases for flower perfumes; canned pressurized air for cleaning and dusting purposes; paint stripping preparations; scale removing preparations for household purposes; colorants for laundry and for toilet purposes; greases for cosmetic purposes; stain removers; non-slipping liquids for floors; non-slipping wax for floors; dental bleaching gels; laundry glaze; starch glaze for laundry purposes; glass cloth; cosmetic preparations for skin care; sun-tanning preparations (cosmetics); cosmetic kits (filled); lotions for cosmetic purposes; almond milk for cosmetic purposes; dry-cleaning preparations; shaving preparations, shaving soap, shaving stones (astringents), after-shave lotions; windscreen cleaning liquids; oils for cleaning purposes; make-up; wallpaper cleaning preparations; all of the above mentioned goods as far as included in this class.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, records; CDs, DVDs and other digital data carriers; mechanisms for coin-operated apparatus; cash registers, hardware for data processing, computers; computer software; fire-extinguishing apparatus; abacuses; egg timers; audio-visual teaching implements; batteries, battery boxes; battery chargers; binoculars; calculating machines; cameras, cinematographic cameras as well as parts and components thereof; lenses for cameras; cubic measurement implements; animated cartoons; cassette players; eyeglass chains; cinematographic films (exposed); CD players; CDs (audio-video); Blu-ray discs; CD-ROMs; computer operating programs, recorded; computer programs; computer software, recorded; computers; printers for use with computers; notebook computers and their accessories, in particular battery chargers, batteries and bags designed for notebook computers; computer software downloadable from the Internet; PDA (personal digital assistants), pocket PCs; computer peripheral devices and their accessories, in particular keyboards, computer mouses, trackballs, surfsticks, joysticks, gamepads, computer steering wheels, electronic devices for generating music for use with computers, plug-in boards, memory cards, graphics cards, TV cards for computers, sound cards, webcams, CD burners, DVD burners, Blu-ray burners; modems, connecting cables, connecting plugs, USB cables, computer loudspeakers, hard discs, disc drives, USB memory drives, network adapters, card readers, loudspeakers, contact lenses; boxes for contact lenses; data processing apparatus; dressmakers’ measures; electric door bells; electronic pocket translators; fire extinguishers; exposed films; fire alarms; frames for photographic transparencies; heat Regulating apparatus; musical juke boxes; optical lenses; letter scales; life buoys; life-saving rafts; electric locks; magnetic data media; encoded magnetic cards; magnetic encoding device; magnets; magnifying glasses; measuring apparatus; microphones; microscopes; neon signs; notebook computers; electronic pens; photocopiers; pocket calculators; projection apparatus; projection screens; radios; record players; remote control apparatus; rulers (measuring instruments); scales; smart cards; smoke detectors; sockets, plugs and other contacts; sound recording apparatus; phonograph records; sound reproduction apparatus; sound transmitting apparatus; spectacle cases; spectacle frames; spectacle glasses; spectacles (optics); sunglasses; electric switches; tape recorders; telephone apparatus, receivers, transmitters, wires; telescopes; TV sets; television apparatus; temperature indicators; electric theft prevention installations; thermometers; thermostats; video cassettes, video game cartridges; videodiscs; videotapes; video screens; video recorders; word processors; video CDs; DVD (video discs); players and recorders for CDs, DVDs and Blu-ray discs; audio-visual apparatus with devices for singing along; adapted holders, carriers, covers designed for sound and video cassettes, CDs, laser discs, videodiscs and DVDs (video); mouse pads; phones, wireless phones, mobile phones as well as parts and components thereof; bags and cases for mobile phones; radio pagers as well as parts and components thereof; bags and cases for radio pagers; covers, containers, carriers and holders for mobile phones and radio pagers; headphones; earphones and microphone/speaker phones for use with mobile phones; call indicators for phones, mobile phones and radio pagers; eye masks as protection from luminous radiation; electronic agendas; electric alarm bells; alarm systems; bar code readers; barometers; buzzers; electric buzzers; central processing units (for data processing); chips (integrated circuits); chronographs (time recording apparatus); computer keyboards; computer memory devices; acoustic couplers; couplers (data processing equipment); optical data media; optical discs; magnetic discs; diving apparatus; divers’ masks; diving suits; electronic notice boards; electronic pens (for visual display units); cords for spectacles; oculars; anti-glare visors; fax machines; filters for photography; floppy disks; recording head cleaning tapes; hygrometers; integrated circuits; intercommunication apparatus; interfaces (interface devices or programs for computers); invoicing machines; converter lenses (optical); magnetic tape units for computers; magnetic tapes; measuring spoons; microprocessors; modems; money counting and sorting machines; monitors (computer hardware); monitors (computer programs); mouse (data processing equipment); optical fibres (light conducting filaments); optical glass; optical goods; optical lenses; parking meters; computer peripheral devices; protractors (measuring instruments); radiotelegraphy sets; radiotelephony sets; scanners (data processing equipment); semiconductors; transparencies (photography); sound recording strips; demagnetizing apparatus for magnetic tapes; telegraph wires; telegraphs (apparatus); teleprinters; teleprompters; ticket dispensers; transmitters (telecommunication); transmitting sets (telecommunication); vacuum gauges; video telephones; whistle alarms; ear plugs for divers; protective goggles for sports; protective helmets for sports; navigation apparatus and accessories, especially antennas, battery chargers, batteries, fitted holders and bags; computer game programs; electronic publications (downloadable); computer programs (downloadable software); stereos for personal use; satellites for scientific purposes; wrist rests for use with computers; cords for cordless phones; holders for mobile phones; antenna caps for mobilephones; electronic circuits and CD-ROMs for the storage of automatic programs for electronic musical instruments; teeth protectors; all of the above mentioned goods as far as included in this class.
Class 25: Clothing, footwear, headgear; aprons; beachwear; swimwear, sportswear; waterproof clothing; gloves; mittens; belts; children’s, men’s and women’s clothing; babies’ clothing; bibs, not of paper; underwear; nightclothes and pyjamas; bath robes; suspenders; hats, caps, cap peaks, berets; bathing and shower caps; muffs; ear muffs; scarves, neck ties, ties, bows, bow ties; socks and stockings, tights; girdles, sock, stocking and tight suspenders; shoes, sport shoes, slippers, beach shoes; masquerade costumes; oversleeves; wrappers (clothing); bandanas (neckerchiefs); bathing sandals; bath slippers; ski boots; boots; suspenders for clothing purposes; brassieres; underpants; camisoles; coats; cuffs (clothing); fur stoles; headbands (clothing); jackets; jerseys, clothing; shirt blouses; knitwear; outer clothing; overcoats; trousers; parkas; pullovers; sandals; scarves, headscarves, shawls; scarves; shirts; camisole slip sets (undergarments); overalls; spats; singlets; suits; bathing suits; T-shirts; uniforms; waistcoats; wet suits for water-skiing; lingerie; trainers (shoes); bodices (lingerie); clothing for gymnastics; sashes; leggings (leg warmers); shower caps; inner soles; pocket squares; non-slipping devices for footwear; footmuffs (not electrically heated); money belts (clothing); sleep masks; veils (clothing); turbans; leather belts; all of the above mentioned goods as far as included in this class.
International trade mark registrations No 1 173 403 designating the European Union
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; toiletries (for personal hygiene); hair lotions for personal hygiene; cosmetic preparations for skin care; adhesives for cosmetic purposes; after-shave lotions; antiperspirants (toiletries); antistatic preparations for household purposes; aromatics (essential oils); quillaia bark for washing; bath salts, not for medical purposes; cosmetic preparations for baths; beauty masks; bleaching salts; bleaching soda; blueing for laundry; colour-brightening chemicals for household purposes (laundry); colour-removing preparations; cosmetic kits (filled); cosmetic preparations for slimming purposes; cosmetics for animals; cosmetic creams; skin whitening creams; denture polishes; preparations for cleaning dentures; breath freshening sprays; deodorants for human beings and for animals; detergents other than for use in manufacturing operations and for medical purposes; cosmetic dyes; eau de Cologne; eau de toilette; hair creams; hair gels, shampoos, hair conditioners and hair moisturizers (cosmetics); perfumes; lipsticks; face creams and lotions; false nails; cosmetic nail polishes and varnishes; bleaching preparations for cosmetic purposes; flavourings for cakes (essential oils); ethereal essences; cleansing milk for toilet purposes; eyebrow cosmetics; eyebrow pencils; fabric softeners for laundry use; false eyelashes; parquet floor wax; hair dyes; beard dyes; moustache wax; hair spray; hair waving preparations; laundry bleach; laundry soaking preparations; starch for laundry purposes; lotions for cosmetic purposes; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; mouth washes, not for medical purposes; nail care preparations; cosmetic pencils; parquet floor wax; pomades for cosmetic purposes; potpourris (fragrances); pumice stone; sandcloth; sandpaper; scented wood; shampoos for pets; boot cream; shoe polish; shoe wax; smoothing preparations (starching); soap for brightening clothes; starch glaze for laundry purposes; sun-tanning preparations (cosmetics); tissues impregnated with cosmetic lotions; varnish-removing preparations; depilatory wax; laundry wax; polishing wax; creams for leather; depilatory preparations; petroleum jelly for cosmetic purposes; decorative transfers for cosmetic purposes; incense sticks (joss sticks); joss sticks; scents; bath preparations, not for medical purposes; dishwasher detergents; toiletry preparations as far as included in this class; cosmetic sunscreen and sun-tanning preparations; sun blocks; preparations for skin care after sunbathing; cloths impregnated with a detergent for cleaning; cotton wool products as far as included in this class, in particular cotton wool, swabs, cotton wool pads; preparations for unblocking drain pipes; scouring solutions; antistatic preparations for household purposes; preparations to make shiny the leaves of plants; extracts of flowers (perfumes); bases for flower perfumes; canned pressurized air for cleaning and dusting purposes; paint stripping preparations; scale removing preparations for household purposes; colorants for laundry and for toilet purposes; greases for cosmetic purposes; stain removers; non-slipping liquids for floors; non-slipping wax for floors; dental bleaching gels; laundry glaze; starch glaze for laundry purposes; glass cloth; cosmetic preparations for skin care; sun-tanning preparations (cosmetics); cosmetic kits (filled); lotions for cosmetic purposes; almond milk for cosmetic purposes; dry-cleaning preparations; shaving preparations, shaving soap, shaving stones (astringents), after-shave lotions; windscreen cleaning liquids; oils for cleaning purposes; make-up; wallpaper cleaning preparations; all of the above mentioned goods as far as included in this class.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, records; CDs, DVDs and other digital data carriers; mechanisms for coin-operated apparatus; cash registers, hardware for data processing, computers; computer software; fire-extinguishing apparatus; abacuses; egg timers; audio-visual teaching implements; batteries, battery boxes; battery chargers; binoculars; calculating machines; cameras, cinematographic cameras as well as parts and components thereof; lenses for cameras; cubic measurement implements; animated cartoons; cassette players; eyeglass chains; cinematographic films (exposed); CD players; CDs (audio-video); Blu-ray discs; CD-ROMs; computer operating programs, recorded; computer programs; computer software, recorded; computers; printers for use with computers; notebook computers and their accessories, in particular battery chargers, batteries and bags designed for notebook computers; computer software downloadable from the Internet; PDA (personal digital assistants), pocket PCs; computer peripheral devices and their accessories, in particular keyboards, computer mouses, trackballs, surfsticks, joysticks, gamepads, computer steering wheels, electronic devices for generating music for use with computers, plug-in boards, memory cards, graphics cards, TV cards for computers, sound cards, webcams, CD burners, DVD burners, Blu-ray burners; modems, connecting cables, connecting plugs, USB cables, computer loudspeakers, hard discs, disc drives, USB memory drives, network adapters, card readers, loudspeakers, contact lenses; boxes for contact lenses; data processing apparatus; dressmakers’ measures; electric door bells; electronic pocket translators; fire extinguishers; exposed films; fire alarms; frames for photographic transparencies; heat regulating apparatus; musical juke boxes; optical lenses; letter scales; life buoys; life-saving rafts; electric locks; magnetic data media; encoded magnetic cards; magnetic encoding device; magnets; magnifying glasses; measuring apparatus; microphones; microscopes; neon signs; notebook computers; electronic pens; photocopiers; pocket calculators; projection apparatus; projection screens; radios; record players; remote control apparatus; rulers (measuring instruments); scales; smart cards; smoke detectors; sockets, plugs and other contacts; sound recording apparatus; phonograph records; sound reproduction apparatus; sound transmitting apparatus; spectacle cases; spectacle frames; spectacle glasses; spectacles (optics); sunglasses; electric switches; tape recorders; telephone apparatus, receivers, transmitters, wires; telescopes; TV sets; television apparatus; temperature indicators; electric theft prevention installations; thermometers; thermostats; video cassettes, video game cartridges; videodiscs; videotapes; video screens; video recorders; word processors; video CDs; DVD. (video discs); players and recorders for CDs, DVDs and Blu-ray discs; audio-visual apparatus with devices for singing along; adapted holders, carriers, covers designed for sound and video cassettes, CDs, laser discs, videodiscs and DVDs (video); mouse pads; phones, wireless phones, mobile phones as well as parts and components thereof; bags and cases for mobile phones; radio pagers as well as parts and components thereof; bags and cases for radio pagers; covers, containers, carriers and holders for mobile phones and radio pagers; headphones; earphones and microphone/speaker phones for use with mobile phones; call indicators for phones, mobile phones and radio pagers; eye masks as protection from luminous radiation; electronic agendas; electric alarm bells; alarm systems; bar code readers; barometers; buzzers; electric buzzers; central processing units (for data processing); chips (integrated circuits); chronographs (time recording apparatus); computer keyboards; computer memory devices; acoustic couplers; couplers (data processing equipment); optical data media; optical discs; magnetic discs; diving apparatus; divers’ masks; diving suits; electronic notice boards; electronic pens (for visual display units); cords for spectacles; oculars; anti-glare visors; fax machines; filters for photography; floppy disks; recording head cleaning tapes; hygrometers; integrated circuits; intercommunication apparatus; interfaces (interface devices or programs for computers); invoicing machines; converter lenses (optical); magnetic tape units for computers; magnetic tapes; measuring spoons; microprocessors; modems; money counting and sorting machines; monitors (computer hardware); monitors (computer programs); mouse (data processing equipment); optical fibres (light conducting filaments); optical glass; optical goods; optical lenses; parking meters; computer peripheral devices; protractors (measuring instruments); radiotelegraphy sets; radiotelephony sets; scanners (data processing equipment); semiconductors; transparencies (photography); sound recording strips; demagnetizing apparatus for magnetic tapes; telegraph wires; telegraphs (apparatus); teleprinters; teleprompters; ticket dispensers; transmitters (telecommunication); transmitting sets (telecommunication); vacuum gauges; video telephones; whistle alarms; ear plugs for divers; protective goggles for sports; protective helmets for sports; navigation apparatus and accessories, especially antennas, battery chargers, batteries, fitted holders and bags; computer game programs; electronic publications (downloadable); computer programs (downloadable software); stereos for personal use; satellites for scientific purposes; wrist rests for use with computers; cords for cordless phones; holders for mobile phones; antenna caps for mobile phones; electronic circuits and CD-ROMs for the storage of automatic programs for electronic musical instruments; teeth protectors; all of the above mentioned goods as far as included in this class.
Class 25: Clothing, footwear, headgear; aprons; beachwear; swimwear, sportswear; waterproof clothing; gloves; mittens; belts; children’s, men’s and women’s clothing; babies’ clothing; bibs, not of paper; underwear; nightclothes and pyjamas; bath robes; suspenders; hats, caps, cap peaks, berets; bathing and shower caps; muffs; ear muffs; scarves, neck ties, ties, bows, bow ties; socks and stockings, tights; girdles, sock, stocking and tight suspenders; shoes, sport shoes, slippers, beach shoes; masquerade costumes; oversleeves; wrappers (clothing); bandanas (neckerchiefs); bathing sandals; bath slippers; ski boots; boots; suspenders for clothing purposes; brassieres; underpants; camisoles; coats; cuffs (clothing); fur stoles; headbands (clothing); jackets; jerseys, clothing; shirt blouses; knitwear; outer clothing; overcoats; trousers; parkas; pullovers; sandals; scarves, headscarves, shawls; scarves; shirts; camisole slip sets (undergarments); overalls; spats; singlets; suits; bathing suits; T-shirts; uniforms; waistcoats; wet suits for water-skiing; lingerie; trainers (shoes); bodices (lingerie); clothing for gymnastics; sashes; leggings (leg warmers); shower caps; inner soles; pocket squares; non-slipping devices for footwear; footmuffs (not electrically heated); money belts (clothing); sleep masks; veils (clothing); turbans; leather belts; all of the above mentioned goods as far as included in this class.
The contested goods are the following:
Class 3: Perfume.
Class 9: Spectacle frames; spectacles [optics].
Class 25: Clothing.
All the contested goods are identically contained in the lists of goods of both earlier trade marks.
- 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 is average.
- The signs
K-CLASSIC
| |
Earlier trade marks | 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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The element ‘FOREVER’ will be understood by the English-speaking part of the relevant public as an English adverb used to indicate that something has no ending. Bearing in mind the relevant goods, this element might indicate that the goods will last forever; it is therefore considered to have a low degree of distinctiveness.
However, for the rest of the public, it has no meaning and is therefore distinctive.
The Opposition Division will first examine the opposition in relation to the part of the public for which ‘FOREVER’ has a meaning and has a low degree of distinctiveness.
Earlier mark a) is the word mark ‘K-CLASSIC’.
Earlier mark b) contains the word ‘CLASSIC’ in standard italic letters preceded by a figurative element consisting of a white and red square containing a highly stylised letter ‘K’ formed of smaller squares and triangles.
The contested sign is a figurative mark containing the words ‘CLASSIC’ and ‘FOREVER’ on two lines; the first word is in gold upper case letters and the second is in black stylised letters.
The word ‘CLASSIC’, present in all the marks, is a basic English word referring to something that serves as a standard or model of its kind, something of the highest class or something that is characterised by simplicity and purity in its form, that is, something excellent. Bearing in mind the nature of relevant goods, this element is considered laudatory and, therefore, has a low degree of distinctiveness for all of the goods.
Considering the above, the letter ‘K’ will be associated with the eleventh letter of the Latin alphabet and is therefore the most distinctive element of the earlier marks.
The opponent is of the opinion that due to the weak character of the element ‘FOREVER’ in the contested mark for the English-speaking part of the public, this element will be disregarded by these consumers, and indeed by the rest of the public as well, since it is in a secondary position. However, contrary to the opponent’s argument, the contested mark does not have any dominant (more visually eye-catching) elements, and nor do the earlier marks.
Visually, the signs coincide in that they all contain the word ‘CLASSIC’, which is, however, found to have a low degree of distinctiveness, as explained above. The marks differ in the remaining word elements as well as in the use of the colour red in earlier mark b).
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the element ‘CLASSIC’, which, however, has a low degree of distinctiveness, as explained above. The signs differ further in the sounds of the additional element of the contested mark, ‘FOREVER’, and of the letter ‘K’ in the earlier marks.
Therefore, the signs are aurally similar to a low degree.
Conceptually, the marks will be perceived with the meanings explained above. To the extent that they will both be associated with something ‘classic’, and given that the word ‘CLASSIC’ has limited distinctiveness, they are conceptually similar only to a low 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 marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of a weak element in the marks as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
The goods are identical and the relevant public is the average consumer with an average degree of attention.
When marks have in common an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. Therefore, the present assessment takes into account the similarities and differences between the non-coinciding components, and their distinctiveness.
In this regard, a coincidence in an element with a low degree of distinctiveness will not normally, on its own, lead to likelihood of confusion.
In the present case, it has been concluded that the signs are visually, aurally and conceptually similar only to a low degree to the extent they coincide in the laudatory element ‘Classic’, which is the less distinctive element of the earlier marks and forms part of the contested sign. Therefore, the consumers will focus on the remaining parts of the signs.
The differing distinctive letter ‘K’ appears at the beginning of the earlier signs; the beginning of a mark is generally attributed more importance and, therefore, this letter will be readily noticed, visually and aurally, by the relevant public. Moreover, the element ‘FOREVER’ of the contested mark, although it has a low degree of distinctiveness, also renders the marks different from a visual and aural point of view.
Therefore, considering what has been stated above in section c) of this decision, and contrary to the opponent’s arguments, the differing elements are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, bearing in mind that the coinciding element is of limited distinctiveness for the relevant public and is not the dominant element of the signs.
Considering all the above, there is no likelihood of confusion on the part of the public that understands English.
The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous case referred to by the opponent is not relevant to the present proceedings. In the case referred to by the opponent, the marks under comparison are the following: the earlier mark is and the contested mark is . In this case, the contested mark is composed of the element ‘CLASSIC’ preceded by the letter ‘C’. However, in the present case, the contested mark contains the additional element ‘FOREVER’, which has the same importance as the element ‘CLASSIC’ and renders the marks aurally and visually similar to a low degree. Therefore, the cases are not comparable and the same conclusion cannot be reached.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
This absence of a likelihood of confusion applies equally to the part of the public for which the element ‘FOREVER’ does not have a meaning and is therefore distinctive. This is because the element ‘CLASSIC’, included in all the marks and being a basic English word widely used across the European Union and similar to its equivalents in the other relevant languages of the European Union (clásico in Spanish, classico in Italian, clássico in Portuguese, klassisk in Swedish, classique in French, klassisch in German, klassikós in Greek, klasszikus in Hungarian, klasisks in Latvian and klasyczny in Polish), will also be understood by this part of the public. Therefore, the signs’ coinciding word has a low degree of distinctiveness while the differing word has a normal degree of distinctiveness, which means that this part of the public will perceive the signs as being even less similar.
Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Ferenc GAZDA | Cristina CRESPO MOLTO | Zuzanna STOJKOWICZ |
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.