+ | Decision 2787938

Date Published: Sep 24, 2017

OPPOSITION No B 2 787 938

Ginasy-Gestão De Marcas, S.A., Edificio Parque América, Praça Luis Ribeiro, 23, 8°, andar-Fracção Kl-Sala 86, 3700-172 S. João da Madeira, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques, Pedro Gil Da Silva Pelayo de Sousa Henriques and Paulo Rui Da Silva Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 – 6.°Dt., 4000-432 Porto, Portugal (professional representatives)

a g a i n s t

Liburdlennon Ltd, 20-22 Wenlock Road, London N1 7GU, United Kingdom (applicant), represented by Axis IP Services Ltd., Peter House Oxford Street, Manchester, Manchester M1 5AN, United Kingdom (professional representative).

On 17/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 787 938 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 614 829  (figurative), namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 8 609 992  (figurative). 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.

1. The goods

The goods on which the opposition is based are the following:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols, and walking sticks; whips, harness and saddlery.

Class 25: Footwear; wearing apparel; belts (clothing).

The contested goods are the following:

Class 18: Leather; imitation leather; leather bags; work bags; evening bags; casual bags; beach bags; shoulder bags; travelling bags [leatherware]; leather credit card wallets; wallets; purses.

Class 25: Clothing; footwear; headgear.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention paid by the public during the purchase of these goods is deemed to vary from average to higher than average, depending on the characteristics of the goods purchased (e.g. their price and/or the fact that they are addressed to professionals and the choice of certain goods could have a significant impact on the business). For instance, an average degree of attention is expected to be paid in relation to the purchase of travelling bags, which are not necessarily expensive goods. A higher than average degree would be expected in relation to, for instance, expensive types of leather, purchased by professionals for the production of other goods.

3. The signs

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 signs under comparison are figurative. They both comprise of the black-and-white shape of a cross with equal arms, known as the ‘Greek cross’.

The right and lower arm of the cross in the earlier mark are represented in black. The upper and left arm of the cross are in white, contoured with a thin black line and form a left-facing right angle with equal arms.

The cross shape in the contested sign comprises of two opposite black angles and two opposite white angles contoured with a thick black line, positioned within the cross shape so that each of its arm is half black, half white.  

It is settled case-law that extremely simple signs, composed of a basic geometric figure such as a circle, a line, a rectangle or a pentagon is not capable, as such, of conveying a message that consumers can remember, with the result that they will not consider it as a trade mark (12/09/2007, T-304/05, Pentagon, EU:T:2012:271, § 22). The cross shape is a simple sign and moreover, it is a commonplace symbol which the consumers encounter in a wide range of religious and secular contexts, including among others it is commonly present on religious ceremonial clothing, headgear, etc. Hence the cross shape alone is not possible to and is unlikely to be perceived as an indication of commercial origin (15/02/2010, R 1606/2008-4, Device of a cross, § 12). In case of marks containing/consisting of simple shapes, it is the additional elements, such as colour combinations, decoration, word and other figurative elements and their particular structure and configuration that would mainly be seen as an indication of origin and will therefore attract the public’s attention.

Visually, the signs coincide to the extent that they both comprise a cross shape in which the contrast of black-and white and right angle element(s) are used. However, they differ in the separate components in the cross shape and in their structure and configuration.

In particular, the components in the cross shape of the earlier mark that are likely to be seen upon perception are one black-contoured right angle with equal arms and two black stripes. The components of the contested sign likely to be seen are two black angles with equal arms and two black-contoured angles. As for the structure of the elements in the signs, it significantly differs, where in the contested sign the same colour angles are placed opposite to each other with the top of the angles gathering in the centre of the cross in a way, so that each of the arms is half black and half white. On the other hand, the earlier sign is much simpler in configuration, where its upper and left arms form a left-facing angle in white, while the lower and right arms are represented in black.  

It is to be noted that as an argument for the similarity of the signs the opponent invokes the fact that they are classified identically under the Vienna Classification. The Opposition Division does not concur with this argumentation. The Vienna Classification is used for administrative (classification) purposes only and is irrelevant for the comparison of two signs. The classification is done by trade mark experts, who analyse the signs taking into account all their details. This is not the case with the public at large, which perceives the signs as a whole. Accordingly, the Vienna Classification is not an indication on how the public perceives the sign, which has been confirmed by the Court of the European Union on several occasions (05/11/2008, T-304/07, ‘Arco stilizzato’, EU:T:2008:477, § 39; 10/11/2011, T-22/10, ‘E’, EU:T:2011:651, § 91). Moreover, the classification relates to the shape of a Greek cross, which as stated above alone may not serve as a trade mark and therefore – the specific representation of this form and its elements and their composition are of relevance.

Bearing in mind that the visual differences in the signs are clearly perceived by consumers and that the visual coincidences between them are mainly in the identical cross shape which alone may not indicate commercial origin and the black-and white contrast used in them, it is considered that these similarities are not sufficient to outweigh the differences in the separate components forming the cross shape and in their overall composition and structure. Since the consumers are likely to focus their attention on the found differences, it is considered that the signs are visually similar at most to a very low degree.

Aurally, since the signs are purely figurative and abstract, it is not possible to compare them aurally.

Conceptually, since both signs comprise of the shape of a cross, it is likely that they convey the concept of a cross. Accordingly, the signs are considered conceptually identical.

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

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).

In the present case, it has been assumed that the goods at issue are identical.

It has been established that the relevant public is the public in general and professional public with average to high degree of attention and that the earlier mark has a normal degree of distinctiveness. Since the signs are purely figurative, the comparison of the signs has reached a conclusion that aural comparison is not possible. It has been further found that the signs are conceptually identical and visually similar at most to a very low degree.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. The choice of the item of clothing is generally made visually and therefore the visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). The same premise is fully applicable with respect to the remaining goods of Classes18 and 25. In this context, the the visual differences between the signs, which are likely to attract the public’s attention as indication of origin, are particularly relevant when assessing the likelihood of confusion between them.

Further, as explained above, the shape of a cross alone is not per se distinctive and therefore the conceptual identity resulting from the shared cross shape has a lesser weight in the global assessment.

Bearing in mind that the found conceptual identity and at most the very low degree of visual similarity between the signs stem from the identical shape of the signs - a simple shape which alone may not serve as an indication of origin, and upon considering the remaining factors, a conclusion is reached that there is no likelihood of confusion on the part of the public. Since simple forms may not serve as indication of commercial origin, no opposition is likely to succeed simply because the marks at issue share the same simple form and/or refer to an identical concept related to such a shape.

In view of the foregoing, 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

María del Carmen SUCH SANCHEZ

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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.