DEEP | Decision 2672890
Date Published: Sep 25, 2017
OPPOSITION No B 2 672 890
Mulino Rosso S.p.A., Piazza Garibaldi N. 40, 80047 San Giuseppe Vesuviano (NA), Italy (opponent), represented by Gennaro Cirillo, Via Santa Lucia, 15, 80132 Napoli Italy (professional representative)
a g a i n s t
Triottica Group Inc, 9077 Las Tunas Drive, Temple City, California 91780, United States of America (applicant), represented by Cabinet Célanie, 5 avenue de Saint Cloud, 78002 Versailles Cedex, France (professional representative).
On 28/07/2017, the Opposition Division takes the following
DECISION:
- The decision adopted by the Opposition Division on 07/03/2017 is hereby revoked and replaced by the present decision.
- Opposition No B 2 672 890 is upheld for all the contested goods and services, namely:
Class 18: Leather and imitations thereof; animal skins, hides; trunks and travelling bags; umbrellas, big umbrellas and walking sticks; whips, harness and saddlery, wallets; purses; credit card cases [wallets]; casual bags; vanity cases (not fitted); collars and covers for animals; net bags for shopping.
Class 25: Clothing, footwear, headgear, shirts; clothing of leather with guards; belts (clothing); furs (clothing); gloves [clothing]; scarves; neckties; hosiery; socks; slippers; beach shoes, skiing or sports shoes; underwear.
Class 35: Retailing or wholesaling of clothing, bags and pocket wallets; online sale of clothing, bags and pocket wallets.
- European Union trade mark application No 14 836 407 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.
- The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 836 407, namely against all the goods in Classes 18 and 25 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 11 305 299. The opponent invoked Article 8(1)(b) EUTMR.
REVOCATION OF DECISION OF 07/03/2017
On 21/04/2017, the Office informed the parties in the present proceedings that it intended to revoke the decision of 07/03/2017 taken in opposition proceedings No B 2 672 890. The reason was that the proceedings that had led to this decision contained an obvious error attributable to the Office, namely that the trade mark application was rejected for all services in Class 35 in the dictum of the decision, when the opposition was, in fact, only filed against part of the services in Class 35.
In accordance with Article 80 EUTMR, the Office gave the parties two months to submit any observations. Neither party filed any observations in response.
Therefore, the decision taken on 07/03/2017 in opposition No B 2 672 890 is hereby revoked.
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 and services
The goods and services 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 and parasols; walking sticks; whips, harness and saddlery; clothing for pets; umbrella rings; saddle trees; saddlery; key cases; fastenings for saddles; bandoliers; harness for animals; alpenstocks; canes; umbrella sticks; vanity cases, not fitted; trunks halters; bands of leather; collars for animals; horse collars; coverings of skins [furs]; horse blankets; laces (leather -); leather straps; straps of leather [saddlery]; harness straps; straps for skates; leather, unworked or semi-worked; horseshoes; leather twist; moleskin [imitation of leather]; umbrella covers; whips; knee-pads for horses; casings, of leather, for springs; covers for horse-saddles; pads for horse saddles; trimmings of leather for furniture; harness fittings; leather leads; imitation leather; walking cane handles; umbrella handles; suitcase handles; slings for carrying infants; pouch baby carriers; cat o’ nine tails; chin straps, of leather; bits for animals [harness]; muzzles; parasols; blinders [harness]; umbrellas; pelts; cattle skins; curried skins; chamois leather, other than for cleaning purposes; fur; gold beaters’ skin; stirrups (parts of rubber for -); card cases [notecases]; music cases; pocket wallets; reins; net bags for shopping; handbags; furniture coverings of leather; haversacks; nose bags [feed bags]; pouches, of leather, for packaging; bags for campers; beach bags; travelling bags; bags for climbers; shopping bags; wheeled shopping bags; boxes of leather or leather board; boxes of vulcanised fibre; hat boxes of leather; butts [parts of hides]; walking stick seats; riding saddles; stirrups; stirrup leathers; umbrella or parasol ribs; frames for umbrellas or parasols; handbag frames; traces [harness]; valises; suitcases; attaché cases; garment bags for travel; valves of leather; backpacks.
Class 25: Clothing, footwear, headgear; clothing of imitations of leather; clothing of leather; motorists’ clothing; cyclists’ clothing; clothing for gymnastics; dresses; dressing gowns; bath robes; non-slipping devices for footwear; clothing; bandanas [neckerchiefs]; bibs, not of paper; caps [headwear]; berets; underwear; underwear (anti-sweat -); smocks; boas [necklets]; teddies [undergarments]; suspenders; studs for football boots; corsets [underclothing]; galoshes; skull caps; footwear; boots for sports; stockings; stockings (sweat-absorbent -); slippers; socks; breeches for wear; short-sleeve shirts; shirts; stuff jackets [clothing]; bodices [lingerie]; hats; top hats; paper hats [clothing]; coats; hoods [clothing]; hat frames [skeletons]; footmuffs, not electrically heated; belts [clothing]; money belts [clothing]; tights; shoulder wraps; detachable collars; camisoles; headgear for wear; collar protectors; ear muffs [clothing]; layettes [clothing]; corselets; suits; beach clothes; masquerade costumes; neckties; ascots; bathing caps; shower caps; headbands [clothing]; pocket squares; scarfs; fittings of metal for footwear; ready-made linings [parts of clothing]; gabardines [clothing]; spats; jackets [clothing]; fishing vests; garters; skirts; jumper dresses; aprons [clothing]; girdles; gloves [clothing]; mittens; ski gloves; welts for footwear; waterproof clothing; ready-made clothing; paper clothing; knitwear [clothing]; jerseys [clothing]; leg warmers; leggings [trousers]; liveries; singlets; hosiery; swimsuits; sweaters; muffs [clothing]; maniples; pelerines; mantillas; sleep masks; skorts; miters [hats]; pants; bathing trunks; vests; babies’ pants [clothing]; trousers; parkas; pelisses; furs [clothing]; shirt yokes; chasubles; pyjamas; cuffs; ponchos; pullovers; tips for footwear; stocking suspenders; sock suspenders; brassieres; heelpieces for footwear; heelpieces for stockings; sandals; bath sandals; saris; sarongs; shoes; esparto shoes or sandals; bath slippers; gymnastic shoes; beach shoes; football boots; sports shoes; ski boots; shawls; sashes for wear; underpants; lace boots; wimples; topcoats; outerclothing; dress shields; gaiter straps; petticoats; slips [undergarments]; shirt fronts; half-boots; boots; fur stoles; soles for footwear; inner soles; heels; pockets for clothing; tee-shirts; togas; footwear uppers; boot uppers; turbans; wet suits for water-skiing; combinations [clothing]; uniforms; veils [clothing]; cap peaks; wooden shoes.
Class 35: Advertising; business management; business administration; office functions; organising and selling leather and imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, clothing for pets, umbrella rings, saddle trees, saddlery, key cases (leatherware), fastenings for saddles, leather shoulder belts, harness for animals, alpenstocks, walking sticks, umbrella sticks, vanity cases (not fitted), trunks, travelling trunks, sling bags for carrying infants, sports bags, knitted bags, empty tool bags of leather, purses, travelling sets (leatherware), bridles (harness), bridoons, gut for making sausages, straps for soldiers’ equipment, kid, game bags, satchels, bags (leatherware), school bags, leather board, cases, of leather or leatherboard, halters, bands of leather, collars for animals, horses collars, coverings of skins (furs), horse blankets, leather laces, leather thongs, straps of leather (saddlery), harness straps, straps for skates, unworked or semi-worked leather, horseshoes, leather thread, moleskin (imitation of leather), umbrella covers, whips, knee-pads for horses, casings, of leather, for springs, saddle cloths for horses, pads for horse saddles, trimmings of leather for furniture, trimmings for harnesses, leashes (of leather), imitation leather, walking stick handles, umbrella handles, suitcase handles, slings for carrying infants, slings for carrying babies, cat o’ nine tails, chin straps, of leather, bits for animals (harness), muzzles; parasols, blinkers (harness), umbrellas, skins and hides, cattle skins, curried skins, chamois leather other than for cleaning purposes, fur-skins, gold beaters’ skin, parts of rubber for stirrups, card cases (notecases), music cases, pocket wallets, reins, net bags for shopping, nets (handbags), covers of leather for furniture, knapsacks, nose bags (feed bags), bags (envelopes, pouches) of leather, for packaging, bags for campers, beach bags, holdalls, bags for climbers; shopping bags, wheeled shopping bags, boxes of leather or leather board, boxes of vulcanised fibre, hat boxes of leather, butts (parts of hides), walking stick seats, riding saddle, stirrups, stirrup leathers, umbrella or parasol ribs, frames for umbrellas or parasols, handbag frames, traces (harness), suit cases; attaché cases, attaché cases, garment bags for travel, valves of leather, back packs, clothing, shoes, headgear, imitation leather clothing, leatherwear, motorists’ clothing, cyclists’ clothing, gymnastic clothing, coats; bath robes, bath robes/gowns, non-slipping devices for shoes, clothing, bandanas (neckerchiefs), non-paper bibs, caps [headwear], berets, underwear, anti-sweat underwear, coveralls, boas (necklets), teddies, suspenders, studs for football boots (shoes), busts, galoshes, skull caps, footwear, footwear for sports, stockings, sweat-absorbent stockings, footlets, socks, breeches, short-sleeved jumpers (shirt fronts), shirts, stuff jackets [clothing], bodices [lingerie], hats, top hats, paper hats (clothing), coats, hoods (clothing), hat frames (skeletons), footmuffs, not electrically heated, belts (clothing), money belts (clothing), tights; collars (clothing), detachable collars, camisoles, headgear for wear, collar protectors, ear muffs (clothing), layettes (clothing), corselets, fancy dress outfits, beach clothes, costume, neckties, ascots, bathing caps, shower caps, headbands (clothing), pocket squares, scarfs, iron fittings for boots, ready-made linings (parts of clothing), gabardines (clothing), gaiters, jackets, fishing jackets, garters, skirts, aprons, aprons (clothing), girdles, gloves [clothing], mittens, ski gloves, welts for boots, rainwear, ready-made clothing, paper clothings, knit wear, jerseys (clothing), leggings, leggings (trousers), liveries, singlets, hosiery, swimsuits, pullovers, muffs (clothing), maniples, pelerines; mantillas, sleep masks, mini-skirts, mitres (hats), pants, bathing trunks, waistcoats, babies’ nappy pants, trousers, parkas, pelisses, furs (clothing), shirt yokes, chasubles, pyjamas, wristbands [clothing], ponchos; pullovers, tips for footwear, suspender belts, sock clips, bras, heel pieces for boots and shoes, stockings (heel pieces for-), sandals, flip flops, saris, sarongs, shoes, esparto shoes or sandals, shoes for swimming, gymnastic shoes, beach footwear, football boots, sports shoes, ski boots, shawls, sashes for wear, underpants, lace boots, wimples, topcoats, outerclothing, dress shields, trouser straps, petticoats, undershirt, shirt fronts, ankle boots, boots, fur stoles, soles for footwear, inner soles, heels, pockets for clothing, t-shirts, togas, vamps, boot uppers, turbans, wet suits for water skiing, jumpsuits, uniforms, veils [clothing], visors for heads, wooden shoes.
The contested goods and services are the following:
Class 18: Leather and imitations thereof; animal skins, hides; trunks and travelling bags; umbrellas, big umbrellas and walking sticks; whips, harness and saddlery, wallets; purses; credit card cases [wallets]; casual bags; vanity cases (not fitted); collars and covers for animals; net bags for shopping.
Class 25: Clothing, footwear, headgear, shirts; clothing of leather with guards; belts (clothing); furs (clothing); gloves [clothing]; scarves; neckties; hosiery; socks; slippers; beach shoes, skiing or sports shoes; underwear.
Class 35: Retailing or wholesaling of clothing, bags and pocket wallets; online sale of clothing, bags and pocket wallets.
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 18
Leather and imitations thereof; animal skins, hides; trunks and travelling bags; umbrellas; walking sticks; whips harness and saddlery; vanity cases (not fitted); collars for animals; net bags for shopping are identically contained in both lists of goods (including synonyms).
The contested big umbrellas are included in the broad category of the opponent’s umbrellas. Therefore, they are identical.
The contested wallets include, as a broader category, the opponent’s pocket wallets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested covers for animals include the opponent’s horse blankets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested purses; credit card cases [wallets]; casual bags overlap with the opponent’s broad category goods made of leather and imitations of leather and not included in other classes, since the contested goods can be made of leather and imitations of leather. Therefore, these goods are identical.
Contested goods in Class 25
Clothing, footwear, headgear are identically contained in both lists of goods.
The contested shirts; clothing of leather with guards; belts (clothing); furs (clothing); gloves [clothing]; scarves; neckties; hosiery; socks; underwear are included in the opponent’s broad category clothing. Therefore, they are identical.
The contested slippers; beach shoes, skiing or sports shoes are included in the opponent’s broad category footwear. Therefore, they are identical.
Contested services in Class 35
The contested retailing of clothing and pocket wallets is synonymous with the opponent’s organising and selling clothing and pocket wallets. Therefore, these services are identical.
The contested retailing of bags overlaps with the opponent’s organising and selling beach bags, to the extent that the services are sold through retail channels and concern beach bags. Therefore, retailing of bags is considered identical to the opponent’s services.
The contested online sale of clothing and pocket wallets relates to one specific method of retailing (among other methods of retailing) that is included in the opponent’s organising and selling of various goods in Class 35. The opponent’s services cover organising and selling clothing and pocket wallets, for example. Therefore, these services are identical to the contested services.
The contested online sale of bags overlaps with the opponent’s organising and selling beach bags, to the extent that the services are also sold online and concern beach bags. Therefore, these services are identical.
The contested wholesaling services are included in the opponent’s broad category organising and selling. Therefore, the contested wholesaling of clothing and pocket wallets, which relates to one specific method of wholesaling (among other methods of wholesaling), is included in the opponent’s organising and selling clothing and pocket wallets. These services are identical.
The contested wholesaling of bags overlaps with the opponent’s broader category organising and selling beach bags, to the extent that the services are sold through wholesaling channels and concern beach bags. Therefore, these services are identical.
- 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 mainly target the public at large. However, wholesale services target professional consumers with specific professional knowledge or expertise. Therefore, the degree of attention of the relevant public may vary from average to high, with consumers of wholesale services paying a higher degree of attention.
- The signs
DEEP | |
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, since the marks are conceptually more similar in English than in the other relevant languages.
The earlier mark is a word mark composed of the English word ‘DEEP’, which means (as an adjective) ‘extending far down from the top or surface’ (information extracted from Oxford Dictionaries online on 15/02/2017 at https://en.oxforddictionaries.com/definition/deep). Therefore, the earlier mark has no meaning in relation to the goods and services and is distinctive. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in upper case or lower case letters, or in a combination thereof.
The contested sign is a figurative mark containing the letters ‘D*EP’ in a stylised upper case black font. The element (or letter) placed after the first letter, ‘D’, will be perceived by a significant part of the relevant public as the letter ‘E’, since it mirrors the following letter ‘E’ and is stylised in the same way as the other letters. Therefore, the word element of the contested sign will be perceived as ‘DEEP’, which is distinctive for the relevant goods and services (as explained above). The figurative element of the contested sign does not convey any particular meaning and is merely decorative. Therefore, it has less impact on the overall perception of the sign than the word element and is less distinctive. The figurative element is not more eye-catching than the verbal element.
Visually, the English-speaking part of the public will perceive the verbal element of the contested sign as a whole as ‘DEEP’. Therefore, the verbal element of the contested sign will be perceived as highly similar to the earlier mark, since these verbal elements differ only in the mirrored letter ‘E’ and the font of the contested sign. The figurative element of the contested sign is decorative and has little influence on the visual comparison of the signs. Therefore, the Opposition Division finds the signs visually similar to an average degree.
Aurally, the signs are identical, since they will both be pronounced as /DEEP/.
Conceptually, the signs have in common the concept of the distinctive word element ‘DEEP’. As stated above, the figurative element of the contested sign has no meaning. Therefore, the signs are conceptually identically.
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 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.
- Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).
According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods and services are identical. Moreover, both signs will be pronounced identically and will be perceived as conveying the same concept (i.e. ‘DEEP’). They are also visually similar to an average degree. This is likely to lead consumers to believe that the goods and services at issue originate from the same manufacturer or related manufacturers. 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). Even consumers who pay a high degree of attention (in this case consumers of wholesale services) need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 30 52 99. It follows that the contested trade mark must be rejected for all the contested goods and services.
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
Martina GALLE | Christian RUUD | Adriana VAN ROODEN |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.